Appeal No. 1997-3224
Application No. 08/231,531
Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966). Furthermore, our reviewing
court states in In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383
U.S. 1 . . . (1966), focused on the procedural and
evidentiary processes in reaching a conclusion under
Section 103. As adapted to ex parte procedure,
Graham is interpreted as continuing to place the
"burden of proof on the Patent Office which requires
it to produce the factual basis for its rejection of
an application under sections 102 and 103." Citing
In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177
(CCPA 1967) [citations omitted].
Claims 1 through 8 and 22 through 24 stand rejected 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).
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
-8-
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