Appeal No. 97-0171
Application No. 08/187,290
inventiveness of the present invention is the ability of reading a printed bar code,
converting the read information into audible sounds, allowing one to edit the read
information and, converting the edited information into a [new] bar code.” (See answers at
page 7.)
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).
After a careful review of the record in this case, we are compelled to agree with
appellants that the Examiner’s conclusion of obviousness is not supported by the types of
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