Appeal No. 1999-0978 Page 3
Application No. 08/533,944
THE REJECTION
Claims 6, 7 and 9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Iwasaki
and Moser. Teramoto is additionally applied to reject claims 8 and 10. We reverse for the reasons
that follow.
OPINION
The Examiner bears the initial burden of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). It is incumbent on the
Examiner to gather all of the necessary facts and present them on the written record in a way that
adequately supports a prima facie case of unpatentability. Furthermore, the Examiner must first
correctly construe the claims before endeavoring to compare the subject matter of the claims with the
prior art in support of a conclusion of obviousness. The Examiner here has both overlooked an
important disputed limitation present in claim 6, the independent claim, and failed to present evidence or
reasoning, supported by the evidence of record, tending to show that the subject matter of the claim as
a whole, including that limitation, would have been obvious to one of ordinary skill in the art at the time
of invention.
Claim 6, the independent claim, is directed to a process in which a hot rail head (rail head at an
initial temperature above 720 °C) is immersed in a cooling agent (a liquid bath; specification, page 3,
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