Appeal No. 2000-0917 Page 5
Application No. 09/104,763
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 to 3 and 5 to
11 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
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). A critical step in
analyzing the patentability of claims pursuant to 35 U.S.C. §
103 is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art,
guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999). Close adherence to
this methodology is especially important in cases where the
very ease with which the invention can be understood may
prompt one "to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the invention
taught is used against its teacher." Id. (quoting W.L. Gore &
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007