Appeal 2007-1101
Application 10/248,535
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1996). “[T]he Examiner bears the initial burden on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.3d 1443, 1445, 24 USPQ 1443, 1444
(Fed. Cir. 1992). Furthermore, “‘there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)). The Examiner’s
extensive reasoning in the Answer is consistent with and follows this
analytical framework.
The disclosed invention in Figures 3A, 3B illustrate a probe 200a
within which is a piston 215a, further within which is the oscillator 300
which is stated at Specification page 10 to be either a prior art piezoelectric
or magnetostrictive device. These elements are not recited in the
independent claims on appeal. The invention as first characterized in the
first paragraph [0014] of the Summary of the Invention at Specification page
5 states that the “tool can be a combination of a conventional probe and an
oscillator (transducer with an oscillating vibration).” Again, this feature is
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