Appeal 2007-0554
Reexamination Nos. 90/006,118 & 90/006,254
Patent 6,196,681 B1
could not be employed to secure the lenses to the hard, single brow bar
portion of Conway’s eyewear for the benefits Bolle discloses.
Accordingly, we conclude that the Examiner has established that a
unitary structure for an eye covering encompassed by all of Appellant’s
claims would have been prima facie obvious to a person having ordinary
skill in the art in view of the applied prior art. However, our deliberations
are not finished. Appellant has submitted secondary evidence of
unobviousness in the form of a Declaration under Rule 132.
2. Declaration of Phillip M. Johnson under 37 CFR § 1.132
The PTO has the initial burden to establish a prima facie case of
obviousness under 35 U.S.C. § 103. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988); In re Piasecki, 745 F.2d 1468, 1471-
72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). The PTO may satisfy its initial
burden by showing objective teaching or prior knowledge in the art which
would have led one of ordinary skill in the art to the invention claimed. In
re Fine, 837 F.2d at 1075, 5 USPQ2d at 1599. Hereinabove, we concluded
that the Examiner in this case satisfied his initial burden to establish that the
subject matter Appellant claims would have been prima facie obvious to a
person having ordinary skill in the art. However, the obviousness of the
claimed invention under 35 U.S.C. § 103 is not thereby resolved. See In re
Piasecki, 745 F.2d at 1472, 223 USPQ at 788:
The process is as stated in In re Rinehart, 531 F.F2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976):
When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over. . . . Prima
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