Appeal No. 97-3294
Application 08/408,225
At the outset, we, of course, keep in mind that the
burden is on the Patent and Trademark Office to establish a prima
facie case of obviousness. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Evidence provides
the basis for a determination that claimed subject matter is
unpatentable under 35 U.S.C. § 103. In the circumstance of
claim 6, a conclusion of obviousness is made by the examiner
relative to a specifically disclosed (specification, pages 9
and 10, and Figs. 8 through 10) and claimed instrument (tube
80) without
any evidence whatsoever being relied upon. Lacking evidence
of obviousness, we are constrained to reverse the rejection of
claim 6.
New ground of rejection
Under the authority of 37 CFR § 1.196(b), we
introduce the following new ground of rejection.
10
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