Appeal No. 1997-4117
Application No. 08/344,746
We reverse the examiner’s rejection of claims 1, 6, 8
through 10, 16, 17, 19, 20 and 27 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103 the examiner
bears the initial burden of presenting a prima facie case of
obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met does the burden of coming forward with evidence
or argument shift to the applicant. Id. If the examiner
fails to establish a prima facie case of obviousness, the
rejection is improper and
will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In order to establish the prima
facie obviousness of a claimed invention, all the claim
limitations must be taught or suggested by the prior art. In
re Royka, 490 F.2d 981, 985, 180 USPQ 580, 583 (CCPA 1974).
Appellant argues that the combined disclosures of Duell and
Golestan fail to teach or suggest a piston body with a square,
hexagonal or pentagonal shape as defined in independent claims
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