Appeal No. 1997-2660 Page 5
Application No. 08/224,407
1.196(b). Our opinion addresses the patentability of claims1
12-20 and of claims 1-11 seriatim.
Patentability of Claims 12-20
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103, 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). Only if that burden is met, does the burden
of coming forward with evidence or argument shift
to the applicant. Id. "A prima facie case of
obviousness is established when the teachings from
the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)). If the examiner fails to establish a
prima facie case, the rejection is improper and will
1Because he appellant filed U.S. Patent Application No.
08/477,742 (‘742 Application), he should know that its claims
21-23 and 25-34 stand provisionally rejected under the
judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-20 of the
instant application. The examiner should consider
(provisionally) rejecting claims 1-20 of the instant
application under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over
claims 21-23 and 25-34 of the ‘742 Application.
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