Appeal No. 1998-2836
Application No. 08/453,211
under the sea. This position, however, represents a
conclusion which is based on a statement of equivalency in the
appellants’ own disclosure. In order to rely on equivalence
as a rationale supporting
an obviousness rejection, the equivalency must be recognized
in the prior art, and cannot be based on the applicant's
disclosure or the mere fact that the components at issue are
functional or mechanical equivalents. In re Ruff, supra. It
is well settled that in order to establish a prima facie case
of obviousness the prior art teachings must be sufficient to
suggest to one of ordinary skill in the art making the
modification needed to arrive at the claimed invention. See,
e.g., In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed.
Cir. 1984). The examiner has supplied no factual basis in the
applied prior art to support his legal conclusion of
obviousness. Thus, we will not sustain the examiner’s
rejection of claim 18 under 35 U.S.C. § 103 based on Ito and
Oonishi.
Since the prior art relied on by the examiner fails to
establish a prima facie case of obviousness of claim 18, we
need not consider the appellants’ evidence of nonobviousness
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