Appeal No. 1999-2186
Application No. 08/857,571
position that the rubber body 4 of Lundy’s tee "is obviously
capable of performing as an eraser" (answer, page 3), and "the
collar of Ranseen is inherently capable of functioning as an
eraser" (id, page 5).
We agree with the examiner that it would have been
obvious to modify Lundy in view of Stewart, or Stewart in view
of Ranseen, in the manner proposed in rejections (1) and (5)
respectively, in order to achieve the advantages taught by the
secondary references. Also, we consider that it was
reasonable for the examiner to assume that the rubber
disclosed by Lundy or Ranseen would inherently function as an
eraser. Therefore, we
conclude that a prima facie case of obviousness of claim 1
based
on inherency was established and the burden shifted to
appellants to show that the rubber structure of Lundy or
Ranseen would not inherently function as an eraser, as
claimed. Cf. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997).
Appellants sought to meet their burden by filing an
Affidavit [sic: Declaration] Pursuant to 37 CFR § 1.132 by
6
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