Appeal No. 1997-0551
Application 08/157,429
Claims 9-37 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Seigneurin, Yale and Aoyama (answer,
pages 4-6). We reverse.
OPINION
Upon careful review of the entire record including
the respective positions advanced by appellants and the exam-
iner, we find ourselves in agreement with appellants that the
examiner has
failed to carry the burden of establishing a prima facie case
of obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1471-1472, 223 USPQ 785, 787-788 (Fed. Cir. 1984). Accord-
ingly, we will not sustain the examiner's rejection.
When an examiner is determining whether a claim
should be rejected under 35 U.S.C. § 103, the claimed subject
matter as a whole must be considered. See In re Ochiai, 71
F.3d 1565, 1569, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995). The
subject matter as a whole of process claims includes the
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