Appeal No. 1999-1127
Application 08/689,164
As Saito fails to disclose each and every claimed element
expressly or under principles of inherency, we cannot sustain
the rejection of claims 1-4 under 35 U.S.C. § 102(b).
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992)), which is
established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). 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
express teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In
re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983).
We find that the Examiner has failed to set forth a prima
facie case. The Examiner fails provide to an express teaching
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