Appeal No. 1997-3542
Application No. 08/192,507
In view of the above, the rejection of claim 14 under 35 U.S.C. § 112, second
paragraph is sustained.
35 U.S.C. § 103
Claims 1, 2, 6, 7, 11, 12, 16 and 17 stand rejected under 35 U.S.C. § 103 over
Julius and Kung, taken with Lambert and Taylor.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is established
by presenting evidence that the reference teachings would appear to be sufficient for one
of ordinary skill in the relevant art having the references before him to make the proposed
combination or other modification. See In re Lintner, 458 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by some objective teaching
in the prior art or by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
Rejections based on § 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention from the prior art. The
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