Ex parte GANESAN - Page 4




                     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.                                                                                                                                       
                                                                                          4                                                                                            





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007