Appeal No. 2000-1630
Application No. 09/085,540
section that are tapered, much less a base section and a top
section that are tapered “to enable said base section and said
top section to be nested for shipment,” as called for in claim
12. In this regard, the examiner’s argument on page 6, lines
16-19, of the answer does not suffice. For this reason, the
examiner’s anticipation rejection of claim 12, as well as claims
4 and 9-11 that depend therefrom, based on Meyers cannot be
sustained.
Rejection (2)
The initial burden of establishing a basis for denying
patentability to a claimed invention rests upon the examiner.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984). As stated by Judge Plager in his
concurring opinion in Oetiker, 977 F.2d at 1449, 24 USPQ2d at
1447:
The process of patent examination is an
interactive one . . . . The examiner cannot
sit mum, leaving the applicant to shoot
arrows into the dark hoping to somehow hit a
secret objection harbored by the examiner.
The ‘prima facie case’ notion, the exact
origin of which appears obscure . . . ,
seemingly was intended to leave no doubt
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007