Appeal No. 1998-0429
Application No. 08/537,187
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 8, mailed Aug. 18, 1997) for the examiner's reasoning in support of the
rejections, and to the appellants' brief (Paper No. 7, filed Jun. 16, 1997) for the appellants’
arguments thereagainst.
OPINION
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.
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
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