Ex parte ROSE - Page 5




          Appeal No. 1995-5010                                                        
          Application 08/116,261                                                      


          claims 1 through 4 and 6, but affirmed with respect to claim                
          12 over Takahashi and Sakurai.  Accordingly, we affirm in                   
          part.                                                                       
               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, 458 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                
                                         -5-                                          





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

Last modified: November 3, 2007