Appeal No. 1997-0344
Application 08/326,992
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 Hospital Systems, 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).
We find that the examiner, at pages 3 to 9 of the Answer, has not met his burden of establishing
a prima facie case of obviousness. The examiner has failed to establish a factual basis to support the
legal conclusion of obviousness. In particular, the examiner has failed to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. at 17, 148 USPQ at 467, and the
examiner has failed to provide a reason why one having ordinary skill in the pertinent art would have
been led to modify Swartz or to combine Swartz, Hunt, and Blanford to arrive at the claimed invention.
No motivation or rationale has been provided by the examiner as to how or why the applied references
would be combined. The examiner has failed to point to some teaching, suggestion or implication in the
prior art as a whole or knowledge generally available to one having ordinary skill in the art which would
have led the artisan to combine the applied references. Lastly, there is no explanation in the Answer or
any other office action, as to how the references would be combined to achieve the invention of
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