Appeal No. 1997-2756
Application 08/242,728
(1987). (“Analysis begins with a key legal question--what is the invention claimed?”). In
similar fashion, the court stated in In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548
(CCPA 1970), "[t]he first inquiry must be into exactly what the claims define." The
examiner's rejection of claim 3 is fatally defective since it does not properly account for and
establish the obviousness of the subject matter claimed.
Where, as here, 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). We, therefore, reverse the rejection of claim 3 under 35 U.S.C.
§ 103.
SUMMARY
To summarize, the rejection of claims 3 and 6 under 35 U.S.C. § 102, over Murray,
is reversed. The rejection of claim 3 under 35 U.S.C. § 103, over Roth, is reversed. The
rejection of claim 6 under 35 U.S.C. § 103, over Roth, is affirmed.
No time period for taking any subsequent action in connection with this appeal may
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