Ex parte SMITH - Page 8




          Appeal No. 1997-3276                                       Page 8           
          Application No. 08/478,567                                                  


                                       OPINION                                        
               In reaching our decision in this appeal, we considered                 
          the  subject matter on appeal and the rejections advanced by                
          the examiner.  Furthermore, we duly considered the arguments                
          and evidence of the appellant and examiner.  After considering              
          the totality of the record, we are persuaded that the examiner              
          erred in rejecting claims 40-50.  Accordingly, we reverse.                  


               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)....  "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 consider the appellant’s argument and                
          the examiner’s reply.                                                       







Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007