Appeal No. 1996-2637
Application No. 08/190,566
decision rejecting claims 4 through 11 and 14 under 35 U.S.C.
§ 102(b).
We turn next to the examiner’s § 103 rejection of claims
12 and 13 as unpatentable over the disclosure of Robin. To
establish obviousness under Section 103, the examiner must
demonstrate that Robin as a whole would have fairly suggested
to those of ordinary skill in the art the claimed subject
matter. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). The burden of producing the factual
basis to support a Section 103 rejection rests on the
examiner. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
177-78 (CCPA 1967).
Here, the subject matter of claims 12 and 13 embraces all
of the limitations recited in claim 4, including the claimed
distance L (defined by the claimed equation) for a given
mating gap width of 0.02 to 0.1 mm (claimed width). However,
the examiner has not explained why it would have been obvious
to employ the claimed distance L for the given claimed width
in the method described in Robin. Accordingly, we are
constrained to reverse this § 103 rejection as well.
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