Appeal No. 1998-2598
Application No. 08/549,078
1991; which, we note, is subsequent to applicant’s claimed effective filing date of April 11,
1991.
The Butts ‘231 disclosure does not indicate the new matter that was introduced
upon filing of the May 10, 1991 application. In any event, appellant recognizes that the
disclosure of Butts ‘473 is prior art with respect to the effective (section 120) filing date of
the instant application, and appears to accept that the disclosure of the applied Butts ‘231
patent could support a section 103 rejection to the same extent that the disclosure of Butts
‘473 could support a section 103 rejection. However, appellant challenges the premise
that the effective filing date of Butts ‘231, or the effective filing date of Butts ‘473, extends
beyond the filing date of the application which issued as U.S. Patent 5,036,473 -- Oct. 4,
1989.
The allocation of burdens requires that the USPTO produce the factual basis for its
rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011,
1016, 154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Certain factual underpinnings,
important in any obviousness inquiry -- the scope and content of the prior art -- have been
challenged by appellant. Appellant’s contesting of the findings with respect to the scope
and content of the prior art, in combination with the fact that material is missing in the
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