Ex parte CAMPO et al. - Page 5

          Appeal No. 96-3555                                                          
          Application No. 08/297,021                                                  

               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).  A prima facie case of obviousness             
          is established by presenting evidence 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, 9           
          F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  Furthermore, the           
          conclusion that the claimed subject matter is prima facie                   
          obvious must be supported by evidence, as shown by some objective           
          teaching in the prior art or by knowledge generally available to            
          one of ordinary skill in the art that would have led that                   
          individual to combine the relevant teachings of the references to           
          arrive at the claimed invention.   See In re Fine, 837 F.2d 1071,           
          1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Rejections based on            
           103 must rest on a factual basis with these facts being                   
          interpreted without hindsight reconstruction of the invention               
          from the prior art.  The examiner may not, because of doubt that            
          the invention is patentable, resort to speculation, unfounded               
          assumption or hindsight reconstruction to supply deficiencies in            
          the factual basis for the rejection.  See In re Warner, 379 F.2d            


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007