Appeal No. 2000-0874 Page 6
Application No. 08/695,554
Thus, initially, the scope and content of the prior art
are to be determined. In the rejection before us in this2
appeal (answer, pp. 4-5), the examiner has briefly set forth
the teachings of the applied prior art.
Secondly, the differences between the applied prior art
(i.e., Clowes) and the claims at issue are to be ascertained.
This the examiner has not done. Then, the examiner must
determine if the ascertained differences between the subject
matter sought to be patented and the combined teachings of the
applied prior art (i.e., Clowes, Saunders and Maeder) are such
that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary
skill in the art. The examiner has not determined that the
actual differences between the subject matter sought to be
patented and the combined teachings of Clowes, Saunders and
Maeder are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person
2As set forth in Manual of Patent Examining Procedure
(MPEP) § 2141, Office policy is to follow the four factual
inquires enunciated in Graham v. John Deere Co. in determining
obviousness under 35 U.S.C. § 103.
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