Ex parte PAUL A. HUMMEL - Page 4




                Appeal No. 96-2653                                                                                                            
                Application No. 08/395,681                                                                                                    


                                                                 OPINION                                                                      
                         In reaching our decision in this appeal, we have given                                                               
                careful consideration to the appellant's specification and                                                                    
                claims, to the applied prior art references, and to the                                                                       
                respective positions articulated by the appellant and the                                                                     
                examiner.  Upon evaluation of all the evidence before us, it is                                                               
                our conclusion that the evidence adduced by the examiner is                                                                   
                insufficient to establish a prima facie case of obviousness  with                                  2                          
                respect to claims 1 and 2.  Accordingly, we will not sustain the                                                              
                examiner's rejection of claims 1 and 2 under 35 U.S.C.  103.                                                                 
                Our reasoning for this determination follows.                                                                                 


                         Before addressing the examiner's rejection based upon prior                                                          
                art, it is an essential prerequisite that the claimed subject                                                                 
                matter be fully understood.  Analysis of whether a claim is                                                                   
                patentable over the prior art under 35 U.S.C.  103 begins with a                                                             
                determination of the scope of the claim.  The properly                                                                        
                interpreted claim must then be compared with the prior art.                                                                   
                Claim interpretation must begin with the language of the claim                                                                


                         2In 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).                                                                                                  
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