Ex parte NAKANISHI et al. - Page 4




              Appeal No. 1998-0153                                                                                        
              Application No. 08/497,227                                                                                  


                     In reaching our decision in this appeal, we have given careful consideration to the                  
              appellants’ specification and claims, to the applied prior art references, and to the                       
              respective positions articulated by the appellants and the examiner.  As a consequence of                   
              our review, we make the determinations which follow.                                                        
                     “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 prima facie case of obviousness by showing insufficient evidence of                            
              obviousness by the examiner or by rebutting the prima facie case with secondary                             
              evidence.  Therefore, we will sustain the rejection of claims 1, 3-5, 7-9 and 11.  With                     
              respect to claims 2, 6 and 10, appellants have successfully rebutted the examiner's                         
              position.                                                                                                   




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