Appeal No. 95-3406
Application 07/940,016
"depression" recited therein relies upon a specification that
fails to comply with the description requirement of 35 U.S.C.
§ 112, first paragraph.
Nevertheless, with respect to the rejection of appealed
claim 8 under 35 U.S.C. § 103, the examiner has held that it
would have been obvious to have provided the casing of Stiso
with a means for holding the casing . . . .
In this case, one of ordinary skill in the
art would have recognized the addition of a
holding means to the casing so that the user
or technician may achieve optimum handling of
the casing, preventing slippage. [page 4 of
Paper No. 12, dated November 2, 1993, remailed
May 19, 1994 per Paper No. 14]
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A prima facie case of
obviousness is established by presenting evidence indicating that
the reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references before
him to make the proposed combination or other modification. See
In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA
12
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