Appeal No. 1998-0495
Application No. 08/324,540
U.S. 825 (1988). 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, "[o]bviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor." Para-Ordnance Mfg., Inc. v. SGS Importers Int’l,
Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir.
1995), citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir.
1983).
We find no disclosure or suggestion in Yamazaki or any of
the other applied references of the examiner's stated
motivation, and the examiner has pointed to none. The only
place we find such reasoning appears in appellant's own
specification at page 8, for example. Although the examiner
adds Erb, Kikuchi, and Castleberry in rejecting claims 8 and
25, claims 12 and 28, and claims 14 through 16 and 30 through
32, respectively, none of the additional references cures the
deficiencies of the primary combination of Lloyd, Doane,
Yokoi, and Yamazaki. Accordingly, the examiner has failed to
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