Appeal No. 2004-0390 Page 3
Application No. 09/727,397
support of the rejections, and to the brief (Paper No. 13, filed January 24, 2003) for the
appellant's arguments thereagainst.
OPINION
Initially we note that the examiner's objection to the disclosure (final rejection, p.
2) relates to a petitionable matter and not to an appealable matter. See Manual of
Patent Examining Procedure (MPEP) §§ 1002 and 1201. Accordingly, we will not
review the issue raised by the appellant on pages 2-3 of the brief.
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 to 3 and 5 under 35 U.S.C. § 103. Our reasoning for this determination
follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
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