Appeal No. 1997-3854
Application No. 08/414,824
In accordance with 37 CFR § 1.192(c)(7), we have selected claim 10 as the
representative claim from the appellants’ grouping of claims 1, 4 and 10 to decide the
appeal on this rejection under 35 U.S.C. § 103. (See brief at page 3.)
From our review of the examiner’s rejection, we find that the examiner has set forth
a prima facie case of obviousness including a motivation for the combination of the prior
art teachings. “To reject claims in an application under section 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, 1455 (Fed. Cir. 1998). Here, we find that appellants have
not overcome the convincing prima facie case of obviousness by showing insufficient
evidence of obviousness or by rebutting the prima facie case with secondary evidence.
Therefore, we will sustain the rejection of claim 10. Similarly, claims 1 and 4 fall with claim
10.
Appellant argues that Newhall is not prior art under 35 U.S.C. § 102 because the
invention was reduced to practice prior to the filing date of Newhall. (See brief at page 6.)
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