Appeal No. 1999-1131
Application No. 08/754,758
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). The Examiner can satisfy this
burden only by showing some objective teaching in the prior
art or that knowledge generally available to one of ordinary
skill in the art would lead that individual to combine the
relevant teachings of the references. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if
this initial burden is met does the burden of coming forward
with evidence or argument shift to the Appellants. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984)
("After a prima facie case of obviousness has been
established, the burden of going forward shifts to the
applicant"). If the Examiner fails to establish a prima facie
case, the rejection is improper and accordingly merits
reversal. Fine, 827 F.2d at 1074, 5 USPQ2d at 1598.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments.
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