Appeal No. 00-0833
Application 08/985,676
The Examiner bears the burden of establishing a prima
facie case of obviousness based upon the prior art. The
Examiner can satisfy this burden only by showing some
objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the
references. The patent applicant may then attack the
Examiner's prima facie determination as improperly made, or
the applicant may present objective evidence tending to
support a conclusion of nonobviousness. In re Fritch, 972
F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992)
(quoting In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
In rejecting claims under 35 U.S.C. 103, the examiner is
to establish a factual basis to support the legal conclusion
of obviousness. In order to establish a prima facie case of
obviousness there must be some teaching, suggestion or
motivation in the prior art to make the specific combination
that was made by the applicant. In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). Based on the
record before us, the examiner has failed to set forth a prima
facie case of obviousness.
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