Ex parte KENDRICK - Page 13




          Appeal No. 1999-2064                                      Page 13           
          Application No. 08/619,853                                                  


          claimed densities would have been an obvious matter of design               
          choice.                                                                     


          Synopsis                                                                    
               In view of the above-noted decisions with respect to                   
          claims 29 to 48, it is our determination that claims 29, 37                 
          and 39 define the "same patentable invention" as claim 12 of                
          Mowry and that claims 30 to 36, 38 and 40 to 48 define a                    
          "separate patentable invention" with respect to claim 12 of                 
          Mowry.  37 CFR  1.601(n).                                                  


          35 U.S.C.  103 Rejection based upon Mowry being prior art                  
          under 35 U.S.C.  102(e)                                                    
               In rejecting claims under 35 U.S.C.  103, the examiner                
          bears the initial burden of presenting a prima facie case of                
          obviousness.  See In re Rijckaert, 9 F.3d 1531, 1532, 28                    
          USPQ2d 1955, 1956 (Fed. Cir. 1993).  In addition, the initial               
          burden of making a prima facie case of prior invention is also              
          on the examiner.  See In re Bass, 474 F.2d 1276, 1287, 177                  
          USPQ 178, 186 (CCPA 1973).                                                  









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