Appeal No. 2006-2975
Application No. 09/794,742
Giangarra and Adapathya. Accordingly, we reverse the Examiner’s
rejections of claims 1 through 31 for the reasons set forth
infra.
I. Under 35 U.S.C. § 103, is the Rejection of Claims 1, 2, 5
through 7, 9, 10, 13 through 15, 17 through 19, 22 through 24 and
26 through 31 as being unpatentable over combination of Roberts
and Nielsen Proper?
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. Thus, the examiner 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 examiner’s conclusion.
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