Appeal No. 1999-2637
Application 08/813,864
suggestions of the invention." Para-Ordnance, 73 F.3d at
1087, 37 USPQ2d at 1239, citing W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-
13. In addition, our reviewing court requires the Patent
Trademark Office to make specific findings on a suggestion to
combine prior art references. In re Dembiczak, 175 F.3d 994,
1000-01, 50 USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
Based on the foregoing, we conclude that the Examiner has
failed to establish a prima facie case of obviousness with
respect to claims 1-21. In summary, we reverse the Examiner’s
rejection of claims 1, 17, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Botterill and Marisetty; we reverse the
Examiner’s rejection of claims 2, 5-8, 11-16, 18, 20, and 21
under 35 U.S.C. § 103(a) as unpatentable over Botterill,
Marisetty, and Ashkin. We also reverse the Examiner’s
rejection of claims 3, 4, 9, and 10 under 35 U.S.C. § 103(a)
as unpatentable over Botterill, Marisetty, and Clark.
REVERSED
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