Ex parte CORRY - Page 7




          Appeal No. 1996-3597                                         Page 7            
          Application No. 08/050,825                                                     


          the additional teachings of Hyde, Mutch, Waller and Kaisha                     
          rather difficult to follow. In our view, the proposed                          
          combination of the disparate teachings of these references                     
          falls significantly short of establishing a prima facie case                   
          of obviousness of appellant's method.                                          
               We note that it is incumbent upon the examiner to give                    
          weight to all of the method limitations that are specifically                  
          recited in the appealed claims, setting forth how a particular                 
          applied reference meets specified limitation(s) that are                       
          claimed as well as noting all of the differences in the                        
          appealed claims over that applied particular reference, the                    
          proposed modification(s) of that applied reference necessary                   
          to arrive at the claimed subject matter, and an explanation                    
          why such proposed modification(s) would have been obvious to                   
          one of ordinary skill in the art from the combined teachings                   
          of all of the applied reference(s) without resort to                           
          appellant's specification.                                                     
               This the examiner has not done by suggesting that "Frahme                 
          teaches basic process steps..." and "Adiletta teaches a                        
          similar process..." which may be modified by other dissimilar                  
          applied prior art (answer, pages 3-5) without specifically                     







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