Appeal No. 1997-0166
Application No. 08/409,933
device. To be specific, the thermal expansion coefficient of the tape 11 and that of the
resin film (surface protective film) 6 become substantially the same and, even if the tape
11 is repeatedly expanded and contracted, the resin film 6 is correspondingly expanded
and contracted in repeated fashion.
The examiner’s unsupported statement (answer, page 6) that there is nothing patentably distinguishable
between appellants’ carrier tape and Yabe’s TAB is insufficient to meet the examiner’s burden of
producing a factual basis for the rejection.
We are not inclined to dispense with proof by evidence when the proposition at issue is not
supported by a teaching in a prior art reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to establish a prima facie case. In
re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984); In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d
664, 668, 148 USPQ 268, 271-72 (CCPA 1966). Our reviewing court states in In re Piasecki, 745
F.2d 1468, 223 USPQ 785, 788 (Fed. Cir. 1984) the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966), focused on
the procedural and evidentiary processes in reaching a conclusion under Section 103.
As adapted to ex parte procedure, Graham is interpreted as continuing to place the
"burden of proof on the Patent Office which requires it to produce the factual basis for
its rejection of an application under section 102 and 103." Citing In re Warner, 379
F.2d 1011, 1020, 154 USPQ 173, 177 (CCPA 1967).
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