Appeal No. 2006-2766
Application No. 10/635,174
OPINION
In rejecting the claims, the Examiner characterizes element 30 in Figure 8 of
Yi as the claimed “housing including an accommodation chamber” and relies on
Shiu for disclosing USB couplings mounted on a support plate arranged in the
accommodation chamber (Answer 4). Appellants assert that the housing identified
in Yi is in fact a non-conductive encapsulation formed by injection molding which
contains no cavity within the finished housing (Br. 5; Reply Br. 4). Therefore, the
main point of contention is based on whether the encapsulation of Yi, alone or in
combination with Shiu, provides a housing including an accommodation chamber,
as recited in claim 2.
As a general proposition, 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)
and In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). A
prima facie case of obviousness is established when the teachings of the prior art
itself would appear to have suggested the claimed subject matter to one of ordinary
skill in the art. See In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993); In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051,
5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985).
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