Ex parte BEER et al. - Page 6




          Appeal No. 1997-1199                                                        
          Application No. 08/309,366                                                  


          1, 17, 148 USPQ 459,                                                        
          467 (1966), and to provide a reason why one having ordinary                 
          skill in the pertinent art would have been led to modify the                
          prior art or to combine prior art references to arrive at the               
          claimed invention.  Such reason must stem from some teaching,               
          suggestion or implication in the prior art as a whole or                    
          knowledge generally available to one having ordinary skill in               
          the art.  Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,              
          1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc.               
          v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227                
          USPQ 657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v.                     
          Montefiore Hosp., 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).                                      
               Furthermore, the Federal Circuit states that “[the] mere               
          fact that the prior art may be modified in the manner                       
          suggested by the Examiner does not make the modification                    
          obvious unless the prior art suggested the desirability of the              
          modification.”  In re Fritch, 972 F.2d 1260, 1266 n.14, 23                  
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