Appeal No. 1997-1873
Application 08/300,855
Claims 6 through 8 are rejected under 35 U .S.C. § 112, first paragraph, for the reasons stated
in the objection to the specification.
Claims 1 through 3 and 6 through 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kay.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kay in view
of Matsuno.
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the
brief and answer for the respective details thereof.2
OPINION
We will not sustain the rejection of claims 1 through 8 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It is the burden of the Examiner to
establish why one having ordinary skill in the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). We note that
our reviewing court states that "when determining obviousness, the claimed invention should be
2Appellant filed an appeal brief on May 20, 1996. Appellant filed a reply brief on October 7,
1996. We note that the record does not show that the Examiner considered or entered this reply brief.
In the normal course of events we would have remanded the appeal back to the Examiner to have a
statement on the record of whether the Examiner considered and entered the reply brief. However,
we decided to proceed with the appeal for judicial economy. Therefore, we will not consider the reply
brief as being properly before us.
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