Appeal No. 1996-3909 Page 6
Application No. 08/115,440
On this record, it is our view that the examiner has
failed to provide convincing reasons based on the applied
prior art, or on the basis of knowledge generally available to
one of ordinary skill in the art, as to why the teachings of
the references should be combined in a manner so as to arrive
at the claimed invention. We note that the mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case. See In re
Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The rejection fails for lack of a sufficient factual
basis being pointed out upon which to reach a conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988).
Accordingly, we agree with appellant that the examiner's
stated rejections fall short of establishing a prima facie
case of obviousness.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 4 and 12-16 under 35 U.S.C. § 103 as being
unpatentable over Paulson in view of Chu et al. and Sparks and
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