Appeal No. 1999-0112 Page 6
Application No. 08/693,614
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 5 through 9
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 when the teachings of the prior art
itself would appear to have suggested the claimed subject
matter to one of ordinary skill in the art. See In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). If
the examiner fails to establish a prima facie case, the
rejection is improper and will
be overturned. See In re Fine, 837 F.2d 1071, 1076, 5 USPQ2d
1596, 1600 (Fed. Cir. 1988).
Claim 5 on appeal is directed to a slide mount and
requires, in part, "a rectangular film portion... having a
pair of holes being cut nearly in half forming open engaging
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