Appeal No. 98-2126 Page 5
Application No. 08/490,180
shot material is blasted by metal shot is a matter of
design choice
. . . . [Page 9.]
We will not support the examiner's position. 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, the rejection is improper and will be overturned.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988).
Here, despite the repeated requests by the appellant for
the examiner to cite a reference and/or references to show that
it is "customary" to provide containers as set forth in
independent claim 34 so that such reference and/or references
can be evaluated in the context of the reference to Keiji and
the claimed subject matter, the examiner has steadfastly
ignored these requests. Obviousness under § 103 is a legal
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