Appeal No. 1996-3525 Page 16
Application No. 08/089,595
second points") was equivalent to the structure disclosed by
the appellants (i.e., resilient elastomeric frustoconical cone
108 shown in Figure 7). Moreover, the examiner never applied
any of the above-noted indicia to support a conclusion that
the structure of Morris '163 (e.g., the threaded shaft 35) is
or is not an "equivalent" of the structure disclosed by the
appellants in the context of 35 U.S.C. § 112, sixth paragraph.
Thus, it is our view that the examiner has not met the burden
of establishing a prima facie case of obviousness since the 6
examiner has not established the structure of Morris '163
(e.g., the threaded shaft 35) is an "equivalent" of the
structure disclosed by the appellants. Thus, the appellants
arguments as to why the structure of Morris '163 (e.g., the
threaded shaft 35) is not an "equivalent" of the structure
disclosed by the appellants are unanswered.
In any event, in applying the above-noted test for
determining equivalence under the sixth paragraph of 35 U.S.C.
§ 112 to ascertain whether the structure of Morris '163 (e.g.,
the threaded shaft 35) is or is not an "equivalent" of the
6In 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).
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