Appeal No. 2003-0949
Application 09/164,517
in the art the obviousness of the invention as set forth in
claims 1-7. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
We find the Examiner met his initial burden of establishing
a prima facie case of obviousness. (Rejection, paper number 11,
pages 3-7) The Appellants responded that the Boliek patent is
not prior art as its filing date was the same as Appellants’
priority date for Provisional Application 60/060414 filed
September 30, 1997. (Paper number 13, page 2) The Examiner then
pointed out that the Boliek reference is a continuation-in-part
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