Ex parte PESOLA - Page 5




          Appeal No. 1999-0859                                                        
          Application No. 08/330,972                                                  


          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 Hospital Systems, Inc.              
          v. Montefiore Hospital, 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).                          
                   Appellant’s response to the Examiner’s obviousness                
          rejection asserts the Examiner’s failure to set forth     a                 
          prima facie case of obviousness since proper motivation for the             
          proposed combination of references has not been established.  In            
          particular, Appellant argues (Brief, page 24) that the                      
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