Appeal No. 1999-1266
Application No. 08/859,472
evidence which would have reasonably suggested going against the explicit teaching of
Abramson in a manner which would result in the presently claimed method.
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).
The examiner's rejection of the claims is fatally defective since they do not properly
account for and establish the obviousness of the subject matter as a whole. On these
circumstances, we conclude that the examiner has failed to provide the evidence which
would reasonably to support a conclusion that the present claims were prima facie
obviousness within the meaning of 35 U.S.C. § 103. Where the examiner fails to establish
a prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988). Therefore, the rejection of claims 16
and 17 under 35 U.S.C. § 103, as unpatentable over the combination of Link, Parkhurst,
Heller, and Abramson is reversed.
Summary
To summarize, the examiner's rejection of claims 16 and 17 under 35 U.S.C.
§ 103 is reversed.
REVERSED
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