Ex parte WELLS et al. - Page 8




          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              
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