Ex parte ROLON et al. - Page 5




              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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