Appeal No. 1997-1379
Application 08/194,748
In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir.
1984). It is incumbent on the Examiner to state how and why
the teachings of the references would have been combined. "If
examination at the initial stage does not produce a prima
facie case of unpatentability, then without more the applicant
is entitled to grant of the patent." In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The Examiner has failed to establish a prima facie case
of unpatentability for at least three reasons: (1) the
rejection does not account for all the claim limitations; (2)
the Examiner fails to explain completely how the references
are combined to produce the claimed subject matter; and (3)
the Examiner fails to provide motivation for the proposed
combination.
(1)
All of the limitations in the claim must be addressed.
See In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970) ("every limitation positively recited in a claim must be
given effect in order to determine what subject matter that
claim defines"); In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970) ("All words in a claim must be
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