Appeal 2007-1740
Application 09/726,776
(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 (1966). “[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.2d 1443, 1445, 24 USPQ2d
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)).
ANALYSIS
With respect to the 35 U.S.C. § 103(a) rejection of independent claim
1 based on the combination of Alexander and Engholm, Appellant’s
arguments in response assert a failure by the Examiner to establish a prima
facie case of obviousness since proper motivation for the Examiner’s
proposed combination of references has not been established. After
reviewing the disclosures of the prior art Alexander and Engholm references
in light of the arguments of record, we are in general agreement with the
Examiner’s position as stated in the Answer.
Appellant’s arguments (Br. 9-10) focus on the contention that
motivation for the proposed combination of references is lacking because
Alexander and Engholm have different objectives. Appellant contends (id.,
4
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