Appeal No. 2000-1176
Application 08/928,902
Turning now to the grounds of rejection, it is well settled that under § 102(b), the
examiner has the burden of making out a prima facie case of anticipation in the first instance by
pointing out where each and every element of the claimed invention, arranged as required by the
claim, is described identically in the reference, either expressly or under the principles of
inherency. See generally, In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986);
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1458,
221 USPQ 481, 485 (Fed. Cir. 1984). The examiner’s statement of the rejection does not state
any basis for the rejection (answer, page 4), and thus we reverse this ground of rejection.
It is further well settled that in order to establish a prima facie case of obviousness under
§ 103(a), the examiner must show that some objective teaching, suggestion or motivation in the
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
this art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims, without recourse to the teachings in appellants’ disclosure. See
generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-
Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30
(Fed. Cir. 1996); B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37
USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d
1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988).. The requirement for objective
factual underpinnings for a rejection under § 103(a) extends to the determination of whether the
references can be combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002), and cases cited therein.
We agree with appellants that Suzuki neither discloses nor suggests a “ceramic green
sheet” or “a slitting wheel in a heating zone,” as these terms are used in the appealed claims, and
thus, we reverse the ground of rejection under § 103(a) based on Suzuki.
With respect to the ground of rejection under § 103(a) based on the combined teachings
of Elderbaum and Carlson, we agree with appellants that neither reference discloses scoring a
material in a heating zone, as required by the appealed claims, and we find that one of ordinary
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