Appeal No. 1997-0318
Application 08/135,173
rejection. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (CCPA
1966), and 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
Corp., 837 F.2d 1044, 1051, 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 Hosp. System., Inc. v. 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).
Here, the Examiner, in our view, is using the invention as a blue print to make the combination
to meet the claimed invention. We find nothing in Haraguchi or Ishikawa which
mentions, let alone solves, the problem of static electricity affecting the data in the data storage
area of a camera. Haraguchi is only concerned with the transfer of data between the temporary
storage and the data storage area in the control means, 12 and 13 respectively in figure 2, during the
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