Appeal 2007-1715 Page 13
Application 10/033,224
facie case” refers only to the initial examination step. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048,
1052, 189 USPQ 143, 147 (CCPA 1976). As discussed in In re Piasecki, the
examiner bears the initial burden, on review of the prior art or on any other ground,
of presenting a prima facie case of unpatentability. If that burden is met, the
burden of coming forward with evidence or argument shifts to the applicant.” In re
Oetiker, 977 F.2d, 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
D. Analysis
We incorporate herein the analysis set forth in the Analysis section for the
rejection of claims 3, 15, and 17 above and add the following comment.
We are not persuaded that Appellant has shown error in the rejection.
Appellant argues that the cited prior art does not disclose steps d)-g) but
does not explain why the Examiner was wrong in finding otherwise. Once the
Examiner has presented what he/she believes is a prima facie case of obviousness,
the burden of coming forward with evidence or argument shifts to the applicant.
Here, without more, the statement expressing that the prior art does not disclose
claimed subject matter is insufficient to overcome the prima facie case of
obviousness.
Appellant also directs our attention to a passage at line 12 – line 19 of page
20 of the Specification and argues that the cited art does not disclose or anticipate
the query disclosed by Appellant. However, a prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the
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