Appeal No. 1998-2924
Application NO. 08/276,290
suggestion in the prior art references to support the
Examiner's rejection.
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. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1,6 (Fed. Cir. 1983). The Examiner, having failed to
point out any teachings or suggestions of the claim 5
limitations in the prior art, either alone or in combination,
has not established a prima facie case. To establish a prima
facie case of obviousness, the examiner must show some
objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the
references. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598. Accordingly, we reverse the Examiner's rejection
of claim 5 as obvious over the prior art. Appellants
previously acknowledged that the patentability of claim 9
stands or falls with the patentability of claim 5. Brief,
page 34. Therefore, we also reverse the Examiner's rejection
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