Ex Parte KITAGAWA - Page 5




          Appeal No. 2002-1670                                                        
          Application 08/768,787                                                      


          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 the rejection of each of the appealed                  
          independent claims 1, 15, 32, and 35, Appellant’s arguments in              
          response assert a failure by the Examiner to establish a prima              
          facie case of obviousness since all of the claimed limitations              
          are not taught or suggested by the applied Shinbori reference.              
          In particular, Appellant contends (Brief, pages 6-9; Reply Brief,           
          pages 3-5) that, contrary to the Examiner’s stated position,                
          Shinbori has no teaching or suggestion of selecting, based on a             
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