Appeal No. 1997-2099
Application No. 08/233,468
refrigeration system. We agree. The Examiner has failed to provide sufficient reasons
why one of ordinary skill in the art would not consider the description sufficient to
reasonably convey that Appellant was in possession of the subject matter in question.
See In re Alton, supra.
The rejection of claims 11 and 17 to 20 is reversed.
B. The Rejections under § 103
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). To that end, the examiner must show that some
objective teaching or suggestion in the applied prior art, or knowledge generally
available in the art would have led one of ordinary skill in the art to arrive at the claimed
invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1630 (Fed. Cir. 1996).
Claims 1 to 10, 17 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Nonaka and Ohuchi. (Examiner’s Answer,
page 3).3
3 We note Appellant considers the Examiner’s citation to the full text translation of the Nonaka
reference as a new ground of rejection. (Reply Brief, pages. 1-5). Questions regarding actions taken by
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007