Ex Parte Rock - Page 7



             Appeal 2007-1474                                                                                  
             Application 10/192,833                                                                            
                                           PRINCIPLES OF LAW                                                   
                   “A claim is anticipated only if each and every element as set forth in the                  
             claim is found, either expressly or inherently described, in a single prior art                   
             reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2                  
             USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).                            
                   In rejecting claims under 35 U.S.C. § 103(a), 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).  It is incumbent upon the                    
             examiner to establish a factual basis to support the legal conclusion of obviousness.             
             See id. at 1073, 5 USPQ2d at 1598.  In so doing, the examiner is expected to make                 
             the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,                 
             148 USPQ 459, 467 (1966), viz., (1) the scope and content of the prior art; (2) the               
             differences between the prior art and the claims at issue; and (3) the level of                   
             ordinary skill in the art.  In addition to these factual determinations, the examiner             
             must also provide “some articulated reasoning with some rational underpinning to                  
             support the legal conclusion of obviousness.”  In re Kahn, 441 F.3d 977, 988, 78                  
             USPQ2d 1329, 1336 (Fed. Cir 2006) (cited with approval in KSR Int’l. Co. v.                       
             Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)).  Only if this                  
             initial burden is met does the burden of coming forward with evidence or argument                 
             shift to the appellant.  See Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.  Id. at                
             1445, 24 USPQ2d at 1444.  See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.                   
             Obviousness is then determined on the basis of the evidence as a whole and the                    

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