Appeal No. 1997-3798 Page 7
Application No. 08/272,018
For the reasons set forth above, the decision of the
examiner to reject claims 2 to 6, 11 and 14 to 16 under 35
U.S.C. § 112, first paragraph, is reversed.1
The obviousness rejections
We will not sustain the rejection of claims 1 to 9, 11
and 14 to 16 under 35 U.S.C. § 103.
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
1The issues of whether the appellant's proposed
amendments to the drawings and the specification are "new
matter" are not appealable issues, however, the examiner
should review the objections in light of our decision on the
written description rejection.
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