Appeal No. 1998-2308
Application No. 08/379,868
IV. Claims 10 through 12 and 20 through 23 stand rejected
under 35 U.S.C. § 103 as unpatentable over Kügler in view of Scobey,
as applied to claims 1 through 9 and 15 through 19, and further in
view of Quazi and Scherer. (Id. at pages 9-11.)
We reverse the aforementioned rejection for reasons which
follow.
Prior to addressing the merits, it is important to emphasize
the procedural burdens allocated to an examiner and an applicant
during the examination process. The initial burden of establishing a
prima facie case of unpatentability rests on the examiner. See,
e.g., In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Only by meeting this initial
burden can the examiner shift the burden of coming forward with
argument or evidence to the applicant. Id.
Rejection I
Claims 12 and 14 stand rejected under the second paragraph of
35 U.S.C. § 112 as indefinite.
As pointed out by the appellant (substitute appeal brief, pages
11-13), a claim complies with the second paragraph of section 112 if,
when read in light of the specification, it reasonably apprises those
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