Appeal No. 2000-1491 Page 10
Application No. 09/067,811
art. Since the examiner has not made the above-noted
determinations necessary to support a rejection under 35
U.S.C. § 103, the examiner has not established a prima facie
case of obviousness and accordingly the decision of the4
examiner to reject claims 1 to 7 under 35 U.S.C. § 103 is
reversed.
We remand the application to the examiner to (1)
determine the scope and content of the applied prior art; (2)
ascertain all the differences between Bannai or Sugiyama or
Kasahara and claims 1 to 7; and (3) determine if the
differences between the subject matter sought to be patented
and Bannai or Sugiyama or Kasahara and any other relevant
prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
4In 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 prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the prior art to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
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