Appeal No. 1999-0346 Page 6
Application No. 08/760,683
In rejecting claims under 35 U.S.C. § 103, 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). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellants argue that the applied prior art does not
suggest the claimed subject matter. Specifically, the
appellants argue that (1) the combination of Ulderup and Damon
is "simply untenable and is constructed solely from the
hindsight provided by reading the patent specification," and
(2) the limitation that the first and second elastomeric
members are compressively preloaded to "fill" the annular
space is not met due to Damon's teaching of gap 126. We
agree.
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