Ex Parte ONISHI et al - Page 5



          Appeal No. 1999-2413                                                        
          Application No. 08/754,203                                                  

          1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745         
          F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re              
          Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).               
               With respect to independent claims 43 and 44, the Examiner, as         
          the initial basis for the obviousness rejection, proposes to modify         
          the endoscope system disclosure of Karasawa with the image                  
          processing teachings of Eino which describe the transformation of a         
          raw image into a turned and/or inverted image for easier viewing on         
          a display.  In the Examiner’s analysis (Answer, page 4), the                
          skilled artisan would have been motivated and found it obvious to           
          apply the raw image transforming teachings of Eino to the system of         
          Karasawa, thereby arriving at Appellants’ invention as claimed.             
               After reviewing the Examiner’s analysis, it is our view that           
          such analysis provides an indication of the teachings of the                
          Karasawa and Eino references, reasonably indicates the perceived            
          differences between this prior art and the claimed invention, and           
          provides reasons as to how and why the prior art teachings would            
          have been modified and/or combined to arrive at the claimed                 
          invention.  In our opinion, the Examiner's analysis is sufficiently         
          reasonable that we find that the Examiner has at least satisfied            
          the burden of presenting a prima facie case of obviousness.  The            
          burden is, therefore, upon Appellants to come forward with evidence         
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