Ex Parte MORRISON et al - Page 3


          Appeal No. 1997-2252                                                        
          Application No. 08/225,965                                 Page 3           

          November 12, 1996) and reply brief (Paper No. 16, filed March 24,           
          1997) for the appellants' arguments thereagainst.                           
                                       OPINION                                        
               In reaching our decision in this appeal, we have given                 
          careful consideration to the appellants' specification and                  
          claims, to the applied prior art references, and to the                     
          respective positions articulated by the appellants and the                  
          examiner.  Upon evaluation of all the evidence before us, it is             
          our conclusion that the evidence adduced by the examiner is                 
          insufficient to establish a prima facie case of obviousness with            
          respect to the claims under appeal.  Accordingly, we will not               
          sustain the examiner's rejection of claims 1 to 10 under                    
          35 U.S.C.  103.  Our reasoning for this determination follows.             
               In rejecting claims under 35 U.S.C.  103, the examiner                
          bears the initial burden of presenting a prima facie case of                
          obviousness.  See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d             
          1955, 1956 (Fed. Cir. 1993).  A prima facie case of obviousness             
          is established by presenting evidence that would have led one of            
          ordinary skill in the art to combine the relevant teachings of              
          the references to arrive at the claimed invention.  See In re               
          Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)             




Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007