Appeal No. 96-3810
Application No. 08/207,801
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is required to provide a reason why one
having ordinary skill in the pertinent art would have been led
to modify the prior art or to combine prior art references to
arrive at the claimed invention. Such reason must stem from
some teaching, suggestion or implication in the prior art as a
whole or knowledge generally available to one having ordinary
skill in the art. Uniroyal, Inc. v. Rudkin-Wiley, 837 F.2d
1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488
U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hospital
Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984).
Here, the examiner has failed to point to any teaching or
suggestion in Strubbe (or any reference) that dividing
available space into fixed length units maximizes the number
of programs
that can be recorded. Furthermore, although television
programs tend to last a half hour or some integral multiple
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