Appeal No. 97-1656 Page 14
Application No. 08/314,26
Novelty and Nonobviousness of Claims 3 through 6
We begin our consideration of the novelty and
nonobviousness of claims 3 thorough 6 by recalling that a
prior art reference anticipates a claim only if the reference
discloses expressly or inherently every limitation of the
claim. Absence from the reference of any claimed element
negates anticipation. Rowe v. Dror, 112 F.3d 473, 478, 42
USPQ2d 1550, 1553 (Fed. Cir. 1997).
In rejecting claims under 35 U.S.C. § 103, furthermore, the
patent examiner bears the initial burden of establishing a
prima facie case of obviousness. A prima facie case is
established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a
person of ordinary skill in the art. If the examiner fails
to establish a prima facie case, an obviousness rejection is
improper and will be overturned. In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). With this
in mind, we address the appellant’s arguments.
Regarding claims 3 through 6, the appellant opines,
“Takahashi always has a mask set in the event of a conflict.
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