Appeal No. 2000-1754
Application No. 08/748,893
in Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). Such determinations include the scope and content of the
prior art and differences between the prior art and the claims at
issue. Further, under Graham the examiner must 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 prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Furthermore, "[t]hat knowledge can
not come from the applicant's invention itself." Oetiker, 977
F.2d at 1447, 24 USPQ2d at 1446.
In the present case, the examiner determined the scope and
content of the prior art (though we disagree with the examiner's
findings as to the existence of compliant bumps in Hawthorne's
device) and stopped short. Nowhere does the examiner determine
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