Appeal No. 97-3926
Application 08/481,091
anticipation. In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950-51 (Fed. Cir. 1999).
For the foregoing reasons, the § 102(b) rejection is
reversed with respect to claim 35 and its dependent claims 36
and 37.
F. The merits of the § 103 rejection
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455
(Fed. Cir. 1998), explains that
[t]o 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
U.S.P.Q.2D 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. See id.
Nowicki's cleaning tape employs an abrasive magnetic
coating which permits simultaneous head cleaning and playback
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