Appeal No. 1997-0164
Application 08/349,300
Knechtel 4,098,914 Jul. 4, 1978
Simelunas 4,719,117 Jan. 12, 1988
Ban et al. (Ban) 5,106,636 Apr. 21, 1992
The claims on appeal stand rejected under 35 U.S.C. § 103
as unpatentable over Bell or Knechtel, Ban, Dodge, Simelunas
and Tay (Answer, page 4). We reverse this rejection for2
reasons which follow.
OPINION
The examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “It is
insufficient to establish obviousness that the separate
elements of the invention existed in the prior art, absent
2 The examiner apparently includes a separate rejection of
claims 12 and 13 under § 103 over “the combined art above as
applied ... further in view of Simelunas.” (Answer, page 7).
However, Simelunas was already applied in the first ground of
rejection (Answer, page 4). Since this rejection stated on
page 7 of the Answer was not in the Final Rejection (see Paper
No. 8), we consider this rejection to be part of and an
elaboration of the rejection restated on page 4 of the Answer.
Furthermore, we note that the examiner has not considered
claims 26 through 28 in the Answer. For purposes of this
appeal, we consider claims 26 through 28 with the rejected
claims as per the Final Rejection (see Paper No. 8). The
omission of these claims from the Answer is harmless error in
view of our decision infra.
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