Appeal No. 2002-0518 Page 3
Application No. 08/934,471
meet his burden of providing the evidence necessary to establish a prima facie
case of obviousness.
Similarly, with regard to the article of manufacture set forth in appellants’
claim 8, the examiner simply concludes (Answer, page 4), “[t]he article of
manufacture, claim 8, is nothing more than a pharmaceutical composition with
packaging materials.” While this is may be true, the examiner’s burden of
providing an evidentiary basis for his rejection is not relieved. On this record, the
examiner makes no attempt to provide the evidence necessary to establish a
prima facie case of obviousness.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “A prima facie case of
obviousness is established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a person of ordinary skill
in the art.” In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)). If the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
The examiner’s unsupported assertion is not sufficient to support a prima
facie case of obviousness. See In re Lee, 277 F.3d 1338, 1343-1344,
61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). See also W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1552, 220 USPQ 303, 312-313 (Fed. Cir.
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