Appeal No. 1996-2158
Application 08/100,260
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). It is the examiner’s responsibility to show that
some objective teaching or suggestion in the applied prior art, or knowledge generally
available [in the art] would have led one of ordinary skill in the art to combine the
references to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 745 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
The method disclosed by Harris differs from that which is disclosed in the claims in
more ways than that which is acknowledged by the examiner. What the examiner has
referred to as an “intermediate” step of heating the composition in Harris is, in fact, an
optional final step. Heating forms a solid object which can be “sawed, filed, cut, sanded,
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machine-ground, waterproofed and painted,” not manually shaped as required by the
claimed method. Thus, the step of heating the composition as disclosed by Harris is
equivalent to the curing step in the present method. Here, we find that the examiner has
failed to provide any reasons based on the applied prior art, or otherwise, as to why it
would have been obvious to one of ordinary skill in the art to heat the
1Harris, col. 4, lines 45-46.
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