Appeal No. 1999-2094 Page 5
Application No. 08/517,198
is our conclusion that the evidence adduced by the examiner is
sufficient to establish a case of obviousness only with
respect to claims 14 through 20. Accordingly, we will sustain
the examiner's rejection of claims 14 through 20 under 35
U.S.C.
§ 103. We will not sustain the examiner's rejection of claims
21 and 22 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a case of obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). A 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).
Rejections based on § 103 must rest on a factual basis with
these facts being interpreted without hindsight reconstruction
of the invention from the prior art. The examiner may not,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007