Appeal No. 97-1163
Application 08/200,044
vehicle needs one to operate, and if a helicopter is claimed,
it may not be necessary to recite a tail rotor even though the
aircraft needs it to fly.
For the foregoing reasons, we also do not sustain the
rejection of claims 1, 3-7, and 9-14 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
The rejection for obviousness
over the Albanese reference
The initial burden is on the examiner to establish a
prima facie basis to reject the claims. In re Oetiker, 977
F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
examiner must provide an adequate factual basis to support an
obviousness conclusion. See e.g., In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988); In re Warner,
379 F.2d 1011, 1016, 154 USPQ 173, 178 (CCPA 1967). Here, the
examiner has failed to present a reasonable explanation as to
why the evidence establishes a prima facie case of
obviousness. The necessary burden has not been met.
The examiner is expected to make the underlying factual
determinations as set forth in Graham v. John Deere Co., 383
6
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