Appeal No. 1999-1847
Application No. 08/810,581
the examiner that the correlation information is an identification which is provided with
each image as recited in the first step of claim 7. Nor do we find that the coordinate points
are a stored identification which is output. Since appellant has shown that the examiner
has not established a prima facie case of anticipation, we will not sustain the rejection
under 35 U.S.C. § 102 of claims 7-12.
35 U.S.C. § 103
“To reject claims in an application under section 103, an examiner must show an
unrebutted prima facie case of obviousness. See In re Deuel, 51 F.3d 1552, 1557, 34
USPQ2d 1210, 1214 (Fed. Cir. 1995). In the absence of a proper prima facie case of
obviousness, an applicant who complies with the other statutory requirements is entitled to
a patent. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). On appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima facie case with
evidence of secondary indicia of nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355,
47 USPQ2d 1453, 1455 (Fed. Cir. 1998). Here, we agree with appellant that the
examiner has not established a prima facie case of obviousness.
The examiner maintains that the teachings of Wuhrl are an “obvious patentable
equivalent” to the recited claimed subject matter. (See answer at page 23.) We disagree
with the examiner. The examiner further maintains that the motivation for using any desired
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007