Appeal No. 1998-1081
Application No. 08/462,202
so doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17-18, 148 USPQ 459, 467 (1966), and to provide a reason
why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in the
prior art as a whole or knowledge generally available to one
having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed.
Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986);
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir. 1984). 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).
With respect to the Examiner’s obviousness rejection of
independent claims 1, 2, 7, 8, 9, 10, and 22, Appellant
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