Appeal No. 1998-1493
Application No. 08/377,861
date of the appellant's application, would have enabled a
person of such skill in the art to make and use the
appellant's invention without undue experimentation.
From our perspective, the responses by the appellant
shifted the burden to the examiner to disprove the appellant's
assertions. This the examiner has not done, for he has failed
to comment upon the appellant's evidentiary offering, except
to agree that swirlers were known in the art, or to his
arguments, and has not advanced acceptable reasoning and/or
evidence to rebut the appellant's position. Therefore, the
examiner has not met his burden and the appellant's stand
essentially is uncontroverted on the record. This being the
case, we will not sustain the rejection of claims 1-10 under
35 U.S.C. § 112, first paragraph.
The Rejection Under 35 U.S.C. § 103
A prima facie case of obviousness is established when the
teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art (see In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)). This is not to say, however, that the
claimed invention must expressly be suggested in any one or
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