Appeal No. 2003-2014
Application No. 09/757,185
Secondly and more importantly, the examiner has improperly
allocated the burden of persuasion in this case. Contrary to the
examiner’s apparent belief, the initial burden is not appellants
to show unexpected results but rather on the examiner to
establish a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) Only if
the examiner’s burden is met does the burden then shift to an
applicant to come forward with evidence or arguments of
nonobviousness. Id. Here, the evidence adduced by the examiner
fails to establish a prima facie case of obviousness.
As previously indicated, this is because the applied prior
art contains no teaching or suggestion, based upon a reasonable
expectation of success, for using the adhesive-filler film
composite of Korleski in the admitted prior art method of bonding
a heat sink to an overmold surface with silicon-containing
residue thereon. At best, therefore, the examiner’s obviousness
conclusion is fatally based upon the improper “obvious to try”
standard. In re O'Farrell, 853 F.2d at 903, 7 USPQ2d at 1681.
It follows that we cannot sustain the examiner’s § 103
rejection of claims 11-13 and 26-29 as being unpatentable over
the admitted prior art in view of Korleski.
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