Appeal No. 1997-4116 Page 7
Application No. 08/589,826
the examiner. Furthermore, we duly considered the arguments
and evidence of the appellants and examiner. After
considering the totality of the record, we are persuaded that
the examiner erred in rejecting claims 1-3 and 5-14.
Accordingly, we reverse.
We begin by noting the following principles from In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
In rejecting claims under 35 U.S.C. Section 103,
the examiner bears the initial burden of presenting
a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Only if that burden is met, does the burden
of coming forward with evidence or argument shift
to the applicant. Id. "A prima facie case of
obviousness is established when the teachings from
the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)). If 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).
With these in mind, we analyze the appellants’ argument.
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