Appeal No. 96-3998
Application No. 08/344,397
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed.
Cir. 1984). These showings by the Examiner are an essential
part
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
As indicated by the cases just cited, the Examiner has at
least two responsibilities in setting forth a rejection under
35 U.S.C. § 103. First, the Examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the Examiner must explain why the
identified differences would have been the result of an
obvious modification of the prior art. In our view, the
Examiner has not properly addressed his first responsibility
so that it is impossible that he has successfully fulfilled
his second responsibility.
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