Appeal No. 2004-0288
Application No. 09/173,747
Claim 67 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight, McDaniel and Lee and further in view of
Watanabe or Miyagawa.3
We make reference to the answer (Paper No. 34, mailed April
9, 2003) for the Examiner’s reasoning and to the appeal brief
(Paper No. 31, filed January 21, 2003) and to the reply brief
(Paper No. 35, filed June 9, 2003) for Appellants’ arguments
thereagainst.
OPINION
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, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). In considering the question of the
obviousness of the claimed invention in view of the prior art
relied upon, the Examiner is expected to make the factual
determination set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. See also In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). The Examiner must
3 We note that the Examiner has withdrawn all the claim rejections
under the first and the second paragraphs of 35 U.S.C. § 112 and the claim
rejections over Ishizaki (answer, page 2).
4
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