Ex parte MIYAZAWA et al. - Page 10

          Appeal No. 1997-3279                                      Page 10           
          Application No. 08/240,702                                                  

          prior art so that the claimed invention is rendered obvious.”               
          In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed.               
          Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902, 221 USPQ                
          1125, 1127 (Fed. Cir. 1984)).                                               

               Here, the examiner fails to identify a sufficient                      
          suggestion to combine Doemen with Suzuki.  Rather than                      
          providing a line of reasoning that explains why such a                      
          combination would have been desirable, he opines, "no                       
          inventive step is applied in such a combination."  (Examiner's              
          Answer at 6.)  The examiner's opinion is conclusory and                     
          unsupported by facts.                                                       

               In view of the examiner’s conclusory opinion, we are not               
          persuaded that the prior art would have suggested the                       
          desirability, and thus the obviousness, of combining Doemen’s               
          teaching with that of Suzuki.  The examiner’s opinion                       
          impermissibly relies on the appellants' teachings or                        
          suggestions to piece together the teachings of the prior art.               
          He fails to establish a prima facie case of obviousness.                    

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