Ex Parte SCHULZ et al - Page 5



            Appeal No. 2001-0017                                                                       
            Application No. 09/040,479                                                                 

            modify the prior art or to combine prior art references 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 Corp., 837 F.2d 1044,                             
            1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), 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); ACS Hosp. Sys., Inc. v.                                
            Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.                             
            Cir. 1984).  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).                                                               
                  With respect to independent claims 1, 10, 15, and 22,                                
            Appellants’ arguments in response to the Examiner’s obviousness                            
            rejection assert a failure by the Examiner to establish a prima                            
            facie case of obviousness since all of the claim limitations are                           
            not taught or suggested by the applied prior art.  After careful                           
            review of the applied Shimizu and Andrews ‘340 references in                               
            light of the arguments of record, we are in general agreement                              
            with Appellants’ arguments as set forth in the Brief.                                      
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