Appeal No. 2004-0045
Application No. 09/044,421
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 Hospital Systems, Inc. v.
Montefiore Hospital, 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 35 U.S.C. § 103(a) rejection of
appealed independent claims 1 and 9, Appellants assert that the
Examiner has failed to establish a prima facie case of obviousness
since all of the claimed limitations are not taught or suggested by
any of the applied prior art references. In particular, Appellants
contend that the Examiner has misinterpreted the disclosure of
Kanbe as providing a description of the claimed display and erasing
scanning features as set forth in each of the appealed independent
claims 1 and 9. In Appellants’ view, Kanbe does not provide for
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