Appeal No. 97-1631 Page 4
Application No. 08/245,267
collective evidence relied on and the level of skill in the
particular art would not have suggested to one of ordinary
skill in the art the invention of claims 1-4, 17, and 20.
Accordingly, we reverse.
At the outset, we note that the examiner’s answer omits
the statutory basis of his rejection. All rejections in the
prosecution history, however, were based on 35 U.S.C. § 103.
(First Action at 2; Final Rejection at 2.) In addition, the
examiner applies plural references in “the rejection,”
(Examiner’s Answer at 1), i.e., the single rejection, in the
answer. Accordingly, we interpret the rejection as under
35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the patent
examiner bears the initial burden of establishing a prima
facie case of obviousness. A prima facie case of obviousness
is established when the teachings from the prior art itself
would appear to have suggested the claimed subject matter to a
person having ordinary skill in the art. If the examiner
fails to establish a prima facie case, an obviousness
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