Appeal No. 1999-0978 Page 7
Application No. 08/533,944
We agree with the Appellants that the Examiner has failed to establish that the combined
references, alone or in combination, describe or suggest the removal of the rail head from a cooling bath
upon obtaining a temperature of between 450 and 600 °C (Brief, page 7). To establish a prima facie
case of obviousness, the Examiner must show some objective teaching in the prior art or otherwise
provide a basis to believe that knowledge generally available to those of ordinary skill in the art would
have lead those artisans “to make the specific combination that was made by the applicant.” In re
Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In the present case, such evidence is lacking.
Therefore, we conclude that the Examiner has failed to establish a prima facie case of obviousness
with respect to the subject matter of claims 6-10.
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