Appeal No. 1998-0693
Application No. 08/387,583
admitted prior art.” Id. Here, we disagree with the examiner’s picking and choosing of
elements/features of the references at his discretion. Clearly, Nicholson teaches the use of
multiple voltages to produce the available colors as discussed above. So, for the
examiner to assert that the color would not be in the combination would tend to negate the
examiner’s use of two voltages. Further, if the color were not to be used, then there would
not be a need to have the segment and background conductor formed of the same layer
since the color need not be matched as Nicholson suggests.
Here, we find that the examiner has not clearly addressed the language of the
claims. We find that the examiner believes that the basic invention is obvious and
attempts to buttress this belief with bits and pieces of prior art teachings combined
together to reject the gist of the invention, yet never coming to grips with the language of
the claims. This is impermissible. Further, this is clear from the prosecution of the case
where the examiner originally rejects the claim over the APA in view of Nicholson and then
discussed four other references throughout the prosecution, but never relying upon any of
the other teachings. In a § 103(a) rejection, It is incumbent upon the examiner to make a
prima facie case of obviousness. As discussed above, we find that the examiner has not
made this prima facie case with respect to claim 1. Nor has
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