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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