Appeal No. 2002-0249
Application No. 09/321,390
the scope of the claimed autothermal reformer assembly under the
Moore test. See the Answer, pages 4, 5 and 16. The examiner
simply ignores the teachings of the application disclosure in
determining the metes and bounds of the claims on appeal. Id.
It then follows that the examiner on this record fails to carry
the burden of establishing a prima facie case of unpatentability.
Accordingly, we reverse the examiner’s decision rejecting claims
1 through 7, 9 through 18, 21 and 22 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
35 U.S.C. § 103
Under 35 U.S.C. § 103, to establish a prima facie case of
obviousness, there must be some objective teachings or
suggestions in the applied prior art references and/or knowledge
generally available to a person having ordinary skill in the art
that would have led such person to arrive at the claimed subject
matter. See generally In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring);
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). In evaluating the prior art references for suggestions,
it is proper to take into account not only the specific teachings
therein, but also the inferences which one skilled in the art
7
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