Appeal No. 1997-0281 Page 6
Application No. 08/351,874
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103,
the examiner bears the initial burden of presenting
a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Only if that burden is met, does the burden
of coming forward with evidence or argument shift
to the applicant. Id. "A prima facie case of
obviousness is established when the teachings from
the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)). If the examiner fails to establish a
prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these in mind, we analyze the appellant’s argument.
The appellant argues, “Breakover diodes and Zener diodes
are distinct devices with completely different architectures
and operating different architectures and operating
characteristics. As such, breakover diodes and Zener diodes
cannot be used interchangeably and are, in fact, suited for
completely different applications." (Dolmovich Decl., ¶ 3.)
He adds, “the rejections ... are improperly based on a
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