Appeal No. 97-1143
Application 08/115,881
art, the examiner must also consider the objective evidence of
nonobviousness. 4
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 11 under 35 U.S.C. § 103 is reversed.
Additionally, we have remanded the application to the
examiner for consideration of issues relating to appellants'
compliance with the requirements 35 U.S.C. § 112, first and
second paragraphs, and prior art of record.
REVERSED AND REMANDED
HARRISON E. McCANDLISH )
4 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)). Once a prima facie case is established, any evidence
supporting the patentability of the claimed invention, such as any evidence in
the specification or any other evidence submitted by the applicant must be
considered. The ultimate determination of patentability is based on the entire
record, by a preponderance of evidence, with due consideration to the
persuasiveness of any arguments and any secondary evidence. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). All the evidence
on the question of obviousness must be considered. In re Piasecki, 745 F.2d
1468, 1471, 223 USPQ 785, 787 (Fed. Cir. 1984).
17
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