Appeal No. 1999-2605
Application No. 08/788,669
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 the Examiner’s obviousness rejection of
independent claims 1 and 7, Appellant’s arguments in response
assert that the Examiner has failed to establish a prima facie
case of obviousness. In particular, Appellant contends (Brief,
page 4) that there is no teaching or suggestion in the process
control system of Bender of the presently claimed feature of
“ . . . automatically pausing between each discrete action.”
After careful review of the Bender reference in light of the
arguments of record, we are in agreement with Appellant’s
position as stated in the Brief.While recognizing that Bender
has no explicit disclosure of the claimed automatic pausing
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