Appeal No. 1999-1802
Application No. 08/806,466
answer (Paper No. 22, mailed Dec. 21, 1998) for the examiner's reasoning in support of
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the rejections, and to appellants’ brief (Paper No. 21, filed Oct. 21, 1998) and reply brief
(Paper No. 23, filed Jan. 26, 1999) for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
To reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. See In re
Deuel, 51 F.3d 1552, 1557, 34 U.S.P.Q.2d 1210, 1214 (Fed.Cir.1995). In
the absence of a proper prima facie case of obviousness, an applicant who
complies with the other statutory requirements is entitled to a patent. See In
re Oetiker, 977 F.2d 1443, 1445, 24 U.S.P.Q.2d 1443, 1444
(Fed.Cir.1992). On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness. [Citation omitted.]
Here we note that text appears to be missing from the brief at the top of page 4 which begins in1
the middle of a sentence, and section header “1” is not present, but header “2" is present at the bottom of
page 4. Furthermore, the Brief contains pages 1-7 and the certificate of mailing is on page 9 and the
transmittal letter indicates that 9 pages were sent. Appellants representative, Mr. Andrew Fuller, was
contacted by Legal Technician, Vasco Harper at Board of Patent Appeals and Interferences, on
August 29, 2001. Mr. Fuller indicated that there was a clerical error and that a portion of the text of the
Brief was not included. The missing text was the material from the immediate prior amendment, filed
March 13, 1998. The missing text was intended to be the arguments spanning pages 3, line 5 to page 4,
line 7 of the amendment. Since this material has been previously considered by the examiner in
formulating the final rejection, we have treated the brief as also containing these arguments.
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