Ex parte REILLY - Page 4




          Appeal No. 2001-0730                                       Page 4           
          Application No. 09/221,543                                                  


          examiner's rejection of claims 5 to 7 and 12 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 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 references 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).                                        


               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              







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