Appeal No. 2001-1541 Page 7
Application No. 09/094,297
The obviousness rejection based on Dierker
We will not sustain the rejection of claims 1, 3 and 9
under 35 U.S.C. § 103 as being obvious over Dierker.
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 would
have led one of ordinary skill in the art to arrive at the
claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
As set forth above, all the limitations of claims 1 and 9
are not found in Dierker. The examiner's determination
(answer, p. 3) that the use of a "rail vehicle" is obviously
suggested by Dierker is not supported by any evidence. We 2
2Evidence of a suggestion, teaching, or motivation to
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
(continued...)
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