Appeal No. 1998-2709
Application No. 08/451,796
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d
1434,
1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
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