Appeal No. 2001-0528 Page 6
Application No. 08/892,348
We sustain the rejection of claims 21 and 22 under 35
U.S.C. § 103 as being unpatentable over Schonert in view of
Kofahl, but not the rejection of claim 23.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a case of obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). A case of obviousness is established when
the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art. See In re Bell, 991 F.2d 781, 783, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993). In considering the question of
the obviousness of the claimed invention in view of the prior
art relied upon, we are guided by the basic principle that the
question under
35 U.S.C. § 103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary
skill in the art at the time the invention was made. See
Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d
804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493
U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ
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