Appeal No. 96-1705
Application No. 08/296,269
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).
As we noted above in our discussion of the rejection
of claims 8 and 9 under 35 U.S.C. § 102, the examiner has
misconstrued the scope of the invention as recited in these
claims. The limitation of the thickness of the proximal end
of the conductors being less than the thickness of the metal
sheet stock is not met by the disclosure of Lim. Since the
examiner treated this limitation as being fully met by the
disclosure of Lim, the examiner has not addressed the
obviousness of the difference between this claim limitation
and the teachings of Lim. Therefore, the examiner has failed
to establish a prima facie case of the obviousness of claims 8
and 9. Accordingly, we do not sustain the examiner’s
rejection of claims 8 and 9.
We now consider the rejection of claims 2-6 under
35 U.S.C. § 103 as being unpatentable over the teachings of
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007