Appeal No. 1999-1065 Application No. 08/754,379 and every element of the claim on such speculation. Thus, the rejection under § 102 cannot be sustained. Since all the limitations of claim 21 and of claims 22 through 24, 30 and 31, which are dependent on claim 21, are not disclosed in Everett, we will not sustain the examiner’s rejection of claims 21 through 24, 30 and 31 under 35 U.S.C. § 102(b). The § 103(a) rejection We will not sustain the rejection of claims 25 through 27 and 32 through 34 under 35 U.S.C. § 103(a) over Everett in view of Roth or Chin. In rejecting claims under 35 U.S.C. § 103 the examiner bears the initial burden of presenting a prima facie case of obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that burden is met does the burden of coming forward with evidence or argument shift to the applicant. Id. If the examiner fails to establish a prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In order to 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007