Appeal No. 2000-0768
Application No. 08/607,458
mere speculation, in view of the level of detail provided by the reference. The allocation of
burdens requires that the USPTO produce the factual basis for its rejection of an
application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016, 154 USPQ
173, 177 (CCPA 1967)). The one who bears the initial burden of presenting a prima facie
case of unpatentability is the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Since we are persuaded that the examiner’s findings with respect to the teachings
of Hooper are in error, we cannot sustain the rejection of claim 1, nor claims 2 through 4
depending therefrom. Instant claim 5 requires a “position coordinate selecting means”
which we do not find disclosed in Hooper, contrary to the rejection before us. We therefore
cannot sustain the rejection of any of the claims on appeal.
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