Appeal No. 2001-0034
Application 08/944,807
1956 (Fed. Cir. 1993) and In re Oetiker, 977 F.2d 1443, 1446, 24
USPQ2d 1443, 1446 (Fed. Cir. 1990). A prima facie case of
obviousness is established when the teachings of the prior art
itself would appear to have suggested the claimed subject matter
to one of ordinary skill in the art. See In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) and In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). If
the examiner fails to establish a prima facie case, the rejection
is improper and will be overturned. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In the present case, the examiner has made no findings of
fact regarding, among other things, the scope and contents of the
applied prior art, or the differences between the prior art and
the appealed claims. In this regard, the examiner’s statement
that White does not specifically disclose “the limitation in the
same manner as claimed” (answer, page 3, last 2 lines) does not
suffice. Moreover, the examiner has not specifically set forth
how the control system of White is to be modified, or a
convincing line of reasoning as to why the artisan would have
been motivated to make any such modification. Hence, the
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