Appeal No. 1999-2637
Application 08/813,864
9, and 10 under 35 U.S.C. § 103(a) as being unpatentable3
over Botterill, Marisetty and Clark.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ
1443, 1444 (Fed Cir. 1992). See also In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed Cir. 1984). The Examiner
can satisfy this burden by showing that some objective
teaching in the prior art or knowledge generally available to
one of ordinary skill in the art suggests the claimed subject
matter. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to
the Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ at 1444.
See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788 (“After a
prima facie case of obviousness has been established, the
burden of going forward shifts to the applicant.”).
3Claims 9, 10, and 13 depend from claim 7. Therefore,
the proper rejection should be claims 9, 10, and 13 rejected
under 35 U.S.C. § 103(a) as being unpatentable over Botterill,
Marisetty, Ashkin and Clark.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007