Appeal No. 1997-4285 Page 7
Application No. 08/420,852
For the reasons set forth above, the decision of the
examiner to reject claims 9 and 10 under 35 U.S.C. § 112,
first paragraph, is reversed.2
The rejections under 35 U.S.C. § 103
We will not sustain the rejection of claims 1 to 10 under
35 U.S.C. § 103.
Upon evaluation of all the evidence before us (i.e., the
applied prior art), it is our conclusion that the evidence
adduced by the examiner is insufficient to establish a prima
facie case of obviousness with respect to claims 1 to 10. 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
2Since 37 CFR § 1.75(d)(1) provides that "phrases used in
the claims must find clear support or antecedent basis in the
description so that the meaning of the terms in the claims may
be ascertainable by reference to the description," we
encourage the appellants to amend the specification to provide
clear antecedent basis for the phrase "reactive settling
agent."
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