Appeal No. 1998-1469
Application No. 08/351,045
the examiner (Paper No. 44, mailed February 27, 1997) the examiner stated that the January 14,
1997 amendment had been entered, and that in view of the amendment, the new ground of rejection
was withdrawn. We note that neither the reply brief nor either of the supplemental reply briefs contains
an appendix listing a copy of the amended claims currently before the Board on appeal as required by
37 CFR §1.192(c)(9). However, the record is clear as to what are the proper claims on appeal.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the appellant's
specification and claims, to the applied prior art references, and to the respective positions articulated
by the appellant and the examiner. As a consequence of our review, we will reverse the rejections of
claims 1-29 under 35 U.S.C. § 103.
Turning first to the rejection of claims 1, 3-7, 9, 16-19, 26 and 28 rejected under
35 U.S.C. § 103 as being unpatentable over Ichijo, the examiner has failed to set forth a prima facie
case of obviousness. 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. See In re Sernaker, 702 F.2d
989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
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