Appeal No. 1999-1660
Application No. 08/444,242
the pertinent art would have been led to modify the prior art
to arrive at the claimed invention. Uniroyal, Inc. v. Rudkin-
Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988), cert. denied, 488 U.S. 825 (1988). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Furthermore, "[o]bviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg., Inc. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239
(Fed. Cir. 1995), citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983). The examiner has provided no evidence or
convincing line of reasoning as to why the skilled artisan
would have used the device and method of Forbath for timing
awake or sleep time such that the switch is released when the
user falls asleep. Therefore, the examiner has failed to
establish a prima facie case of obviousness. Accordingly, we
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007