Appeal No. 2005-2646
Application No. 09/948,377
the top portion of the filter so that a space can be saved, and (2) even if Mitterer fails to
suggest a modification of the fins of Bartalone, it would have been obvious to modify the
shape of the fins of Bartalone with circular fins “since the examiner takes Official Notice
of the fact that such shaping of the fins to cool devices and its practice to maximize the
cooling effect would be within the level of ordinary skill in the art” (final rejection, page
3), we find that both of these positions fail for the same reason, i.e, a total lack of any
substantial evidence to support them. Conclusory statements like those noted above do
not fulfill the examiner’s obligation in the first instance to make out a prima facie case of
obviousness and when relied upon as the principal evidence upon which a rejection is
based inevitably lead to a perception that the examiner is merely engaged in hindsight
reconstruction of the claimed subject matter based on appellant’s own disclosure.
In accordance with the foregoing discussions, the decision of the examiner to reject
claim 1 under 35 U.S.C. § 103 is reversed.
Since we have not sustained either of the rejections of claim 1 maintained by the
examiner on appeal, it follows that
the decision of the examiner is reversed.
REVERSED
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