Appeal No. 1998-0752
Application 08/389,096
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 9, 11, and 12 are properly
rejected under 35 U.S.C. § 103. Thus, we will sustain the
rejection of these claims; but we will reverse the rejection
of the remaining claims on appeal for the reasons set forth
infra.
It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
In addition, the Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
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