Ex parte MOORMAN - Page 12




          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                 



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