Appeal No. 1999-0574
Application No. 08/583,588
operatively associated with the cornice. Appellants also
argue that they have not identified or admitted to prior art
directed to the claimed combination. Finally, appellants
argue that persons skilled in this art could not combine the
teachings of Zerillo with the admitted prior art unless
improper hindsight is applied [brief, pages 5-6]. The
examiner simply disagrees.
We will not sustain the rejection of the claims based
on Zerillo and the admitted prior art as formulated by the
examiner because the examiner has failed to establish a prima
facie case of obviousness. As noted above, the examiner has
the burden of initially presenting a prima facie case of
obviousness. The examiner cannot satisfy this burden by
simply dismissing differences between the claimed invention
and the teachings of the prior art as being obvious. The
examiner cannot identify individual features of the claimed
invention in the prior art and simply assert obviousness based
on combining these individual features. In this case, the
examiner must either present a cogent rationale why the
artisan would have been motivated to combine the teachings of
the individual prior art, or the examiner must present us with
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007