Appeal No. 1997-3528
Application No. 08/230,659
Claims 11, 12, 14, and 17 through 20 stand rejected under
35 U.S.C. § 103 as unpatentable over Ducharme in view of
Bjorklund.
In any rejection, whether it be based on prior art
grounds or any other ground, the initial burden of presenting
a prima facie case of unpatentability rests on the examiner.
In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In this case, the examiner has failed to meet his
burden of proof.
The examiner states that Ducharme “teaches the invention
substantially as claimed” but admits that Ducharme does not
teach the “levels of irradiation” recited in appealed claim
11. (Examiner’s answer pages 5-6.) Nevertheless, the
examiner relies on the teachings of Bjorklund, together with
certain calculations based on assumptions, to make up for the
difference between the claimed subject matter and Ducharme.
(Examiner’s answer, page 6.) Specifically, the examiner’s
position is stated as follows:
It would have been obvious to one skilled in the art
that the process described by Bjorklund et al. ‘148
for measuring photoconductivity may well have been
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