Appeal No. 1996-3284
Application 08/154,864
discussion of the rejection under 35 U.S.C. § 112, second
paragraph. We find that it is not possible to apply the prior
art to claims 3 and 4 in deciding the question of obviousness
under 35 U.S.C. § 103 without resorting to speculation and
conjecture as to the meaning of the questioned limitation in
claim 3 or claim 4. This being the case, we are therefore
constrained to reverse the Examiner's rejection of claims 3
and 4 under 35 U.S.C. § 103 in light of the holding in In re
Steele, 305 F.2d at 862, 134 USPQ at 295 (CCPA 1962). This
reversal of the Examiner's rejection is based only on the
procedural ground relating to the indefiniteness of these
claims and therefore is not a reversal based on the merits of
the rejection.
As to claims 5 to 9, we treat them on the merits of the
applied prior art.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
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