Appeal No. 1998-1651
Application No. 08/594,964
“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 (CAFC 1998). Here, we find that appellants have overcome the prima
facie case of obviousness by the examiner by showing sufficient evidence of
nonobviousness. Therefore, we will not sustain the rejection of independent claims 1 and
9.
Appellants argue that Parks fails to teach or suggest the claimed invention. (See
brief at page 5.) We agree with appellants. Appellants argue that Parks does not suggest
to skilled artisans to move the metal capsule to the middle of the coil as suggested by the
examiner. We agree with appellants. Appellants argue that the only way for the examiner
to reach the conclusion of maximum bombardment of the capsule by placing it in the
middle is through improper hindsight. (See brief at page 5.) We
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