Appeal No. 2005-1805
Application 09/728,705
Whether the Rejection of Claims 1-23 Under 35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in the
art the invention as set forth in claims 1-23. 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 Appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.
See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of all the pertinent
evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker, 977 F.2d at 1445, 24 USPQ2d at
1444. “[T]he Board must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002).
With respect to independent claim 1, we find one and only one of Appellant’s augments
persuasive. The remaining arguments are unpersuasive for essentially the reasons set forth by
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