Appeal No. 1996-3262
Application No. 08/141,632
which discloses or obviates all of the limitations set forth in
claims 2 and 3.
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a
prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir.
1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8
(CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966). Furthermore, our reviewing court states in In re
Piasecki, 745 F.2d 1468, 223 USPQ 785, 788 (Fed. Cir. 1984) the
following:
The Supreme Court in Graham v. John Deere Co., 383 U.S.
1 (1966), focused on the procedural and evidentiary
processes in reaching a conclusion under Section 103.
As adapted to ex parte procedure, Graham is interpreted
as continuing to place the "burden of proof on the
Patent Office which requires it to produce the factual
basis for its rejection of an application under section
102 and 103." Citing In re Warner, 379 F.2d 1011,
1020, 154 USPQ 173, 177 (CCPA 1967).
Therefore, we will sustain the rejection of claim 1 and not
sustain the rejection of claims 2-3 under 35 U.S.C. § 103 as
being unpatentable over Kimoto et al or Nakahata et al when taken
with Cole or Olmstead, or Miura et al.
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