Ex parte SMIT et al. - Page 7




          Appeal No. 1998-1539                                                        
          Application No. 08/683,186                                                  

          identify what is recited in the claims and state, generally,                
          that the feature is “neither taught nor suggested in the                    
          references” (principal brief-page 5), the initial burden to                 
          establish a prima facie case of obviousness is the examiner’s.              
          Since the examiner pays no attention to the dependent claims,               
          we cannot say that a prima facie case has been set forth.                   
          Accordingly, we will not sustain the rejection of claims 8 and              
          9 under 35 U.S.C. § 103 based on the examiner’s lack of a                   
          specific rationale for rejecting such claims.                               


               We have sustained the rejection of claim 5 under 35                    
          U.S.C.                                                                      
          § 103 but we have not sustained the rejection of claims 8 and               
          9 under 35 U.S.C. § 103.                                                    
               Accordingly, the examiner’s decision is affirmed-in-part.              
               No time period for taking any subsequent action                        
          in connection with this appeal may be extended under                        
          37 CFR § 1.136(a).                                                          
                                  AFFIRMED-IN-PART                                    



          Errol A. Krass                  )                                           
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