Appeal No. 97-0266
Application No. 08/176,370
legal conclusion of obviousness, 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 pointed to nothing
that would indicate to one of ordinary skill in the art how or
why to modify Tran to include such a bypass path.
Accordingly, we cannot sustain the rejection.
Appellants have presented numerous additional arguments
pertaining to individual claims or small groups of claims.
For example, appellants contend that Murray fails to disclose
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