Appeal No. 2000-0464
Application No. 09/023,198
of a guide rib as taught by Glomb et al. to disperse the
stress that occurs when the connector housing is fixed on the
printed circuit board and to prevent a crack on the base
portion of the guide rib."
The examiner fails to point out where the prior art
suggests such a modification. We find the motivation provided
by the examiner solely in appellant's specification (page 3,
lines 16-20). In rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the examiner to provide a reason why one
having ordinary skill in the pertinent art would have been led
to modify the prior art 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, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438
(Fed. Cir. 1988), 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). These showings by the examiner are an
essential part of complying with the burden of presenting a
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