Appeal No. 1997-2790
Application No. 08/486,830
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). We find that the examiner has provided teachings
and a convincing line of reasoning why one skilled in the art would have desired to have a
shell which further “includes a handle extending from the lower surface, the handle includes
a grip portion spaced from and disposed below a plane defined by the lower surface and
configured to enable gripping and support of the workslate unit with one hand during use”
as set forth in the language of claim 25.
“To reject claims in an application under § 103, an examiner must show an
unrebutted prima facie case of obviousness. See In re Deuel, 51 F.3d 1552, 1557, 34
USPQ2d 1210, 1214 (Fed. Cir. 1995). In the absence of a proper prima facie case of
obviousness, an applicant who complies with the other statutory requirements is entitled to
a patent. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). On appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima facie case with
evidence of secondary indicia of nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355,
47 USPQ2d 1453 (CAFC 1998). Here, we find that appellants have not overcome the
prima facie case of obviousness by showing insufficient evidence by the examiner of
nonobviousness or by rebutting the prima facie case with evidence of secondary indicia of
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