Appeal No. 97-0169
Application No. 08/194,369
art teachings of Parobek merely teach the skilled artisan to use a single reference sample
and reference curve. The Examiner has not pointed to any clear indication in Parobek that
suggests the use of plural reference curves or the automatic processing of measured data.
Nor has the Examiner cited a clear teaching of using a first value to determine the second
value. (See answer at pages 6-7.)
The Examiner attacks the level of disclosure in appellant’s specification and asserts
that the storage and use of plural curves would have been “obvious and noninventive” and
"elementary and obvious." (See answer at pages 6-7.) We disagree with the Examiner’s
assertions. The burden of presenting a prima facie case is upon the Examiner. Appellant
has clearly shown that the Parobek reference is lacking certain elements and features
recited in claim 1. The Examiner acknowledges the deficiencies and merely makes a
conclusion that skilled artisans would have been motivated to modify Parobek without
providing any evidence or convincing line of reasoning to carry out these modifications.
This does not give rise to the required presentation of a prima facie case of obviousness.
We have reviewed the portions of the Parobek reference cited by the Examiner and
do not find that Parobek uses the determination of the constituent components to select a
reference and use the selected reference to determine thickness.
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