Appeal No. 97-0783
Application 08/396,184
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 (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. Sys., Inc. v. Montefiore Hosp., 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).
With respect to independent claims 7 and 10, the examiner basically finds that Sakurada teaches
all the recitations of these claims except for a transfer switch for transferring a control signal to a video
recorder and a means for maintaining data entered into the display [answer, pages 3-5]. The examiner
cites Koide as teaching the claimed transfer switch and the claimed maintaining means. The examiner
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007