Appeal No. 2000-1185 Page 8
Application No. 08/886,516
as continuing to place the "burden of proof on the
Patent Office which requires it to produce the factual
basis for its rejection of an application under section
102 and 103" [citing In re Warner, 379 F.2d 1011, 1016,
154 USPQ 173, 177 (CCPA 1967)].
Additionally, in order to reach the conclusion that the
claimed subject matter is prima facie obvious, the Examiner must
further establish why one having ordinary skill in the art would
have been led to the claimed invention by the express teachings
or suggestions found in the prior art, or by implications
contained in such teachings or suggestions. In re Sernaker, 702
F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). The Federal
Circuit further reasons in Para-Ordnance Mfg. Inc. v. SGS
Importers Int’l Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237,
1239-40 (Fed. Cir. 1995), that for the determination of
obviousness, the court must answer whether one of ordinary skill
in the art who sets out to solve the problem and who had before
him in his workshop the prior art, would have been reasonably
expected to use the solution that is claimed by Appellants.
A review of Moore shows that the reference relates to
placing an identifiable mark on goods that, upon field
inspection, determines authenticity and distribution track of
goods. We find Appellants’ summary of Moore to be reasonable and
further note that upon exposure to a specific wavelength of
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