Appeal 2007-1280
Application 10/894,950
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)).
At the outset, it is significant to note that no arguments are presented
in the Brief or Reply Brief that the respectively relied upon references are
not properly combinable within 35 U.S.C. § 103. Therefore, any arguments
that could have been made with respect to the combinability of these
references within 35 U.S.C. § 103 have been waived. Moreover, we observe
that the Examiner has in the first, fourth and sixth stated rejections relied
upon the same references to Lenormand and Harres to argue the
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013