Ex parte PARADA - Page 18




          Appeal No. 97-1025                                                          
          Application No. 08/183,571                                                  


                                The obviousness issue                                 
               The test for obviousness is what the combined teachings of             
          the references would have suggested to one of ordinary skill in             
          the art.  See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,               
          1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208              
          USPQ 871, 881 (CCPA 1981).  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 to make the modifications                
          necessary to arrive at the claimed invention.  See  In re Fine,             
          837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In            
          re Lintner, 9 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).               
          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             



                                          18                                          





Page:  Previous  11  12  13  14  15  16  17  18  19  20  21  22  23  24  25  Next 

Last modified: November 3, 2007