Appeal No. 96-2203
Application 08/160,463
103; we will reverse this rejection of claims 5-8 . We disagree with the Examiner that
claims 9-13 are properly rejected under 35 U.S.C. § 103; we will reverse this rejection of
claims 9-13.
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998).
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
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