Appeal No. 97-3671
Application 08/266,977
9. It is not at all clear what is the actual ground of
rejection beyond that the claims have been rejected as being
obvious over a combination of references. It is not known how
each reference is relied on for which features of the
invention, and even which specific references have been relied
on.
B. Discussion
The examiner characterizes the appellant’s argument
pointing out the deficiencies of the examiner’s position in
making out a prima facie case of obviousness as "essentially
denies 35 USC 103" and "a common and transparent evasive
tactic" (see answer at page 5). We disagree. Obviousness is
not presumed, but must be established by the examiner by a
preponderance of the evidence. There is nothing "evasive"
about pointing out the lack of specificity and lack of
meaningful discussion by the examiner with regard to the
applied prior art. To the contrary, that is precisely what an
appellant should do, provided that the assertions are true, as
here.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
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