Appeal No. 1999-0413
Application No. 08/294,819
GROUND OF REJECTION
Claims 1-3 and 44 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Maggio in view of Mantyh.
We reverse.
DISCUSSION
In reaching our decision in this appeal, we considered appellants’
specification and claims, in addition to the respective positions articulated by the
appellants and the examiner. We make reference to the examiner’s Answer1 for the
examiner’s reasoning in support of the rejection. We further reference appellants’
Brief2, and appellants’ Reply Brief3 for the appellants’ arguments in favor of
patentability. We note that the examiner entered and considered appellants’ Reply
Brief.4
THE REJECTION UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). In meeting this burden, we remind the examiner that “[t]he Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not, because
it may doubt that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”
1 Paper No. 30, mailed July 7, 1998.
2 Paper No. 27, received March 27, 1998.
3 Paper No. 31, received Septemer 8, 1998.
4 Paper No. 33, mailed November 24, 1998.
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007