Appeal No. 1997-0881
Application No. 08/367,508
instances where the prior art uses a plurality of punchouts, none are similar to or would
reasonably direct one skilled in this art to the method claimed.
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
On these circumstances, we are constrained to reach the conclusion that the examiner has
failed to provide the evidence necessary to support a prima facie case of obviousness as
to the claimed method. Where the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir.1988). Therefore, the rejection of claims 1-5 and 8-10 under 35
U.S.C. § 103 is reversed.
Other issues
Upon return of the application to the group, we would urge the examiner and
appellants to resolve the apparent inconsistency raised by claim 5 which requires that
"said second boundaries are tangential to said first boundaries" and claim 1, on which
claim 5 ultimately depends, which requires that "said second boundaries are entirely
outside of said first boundaries." It would not appear possible for the boundaries to be
tangential to each other and yet have one boundary entirely outside the other.
Summary
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