Appeal No. 1999-2259
Application 08/711,614
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 Piasecki, 745 F.2d at 1472, 223 USPQ at 788
(“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, 837 F.2d at 1074, 5 USPQ2d at 1598.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments.
See In re Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444 (“In
reviewing the examiner’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.”).
We focus first on independent claim 6 which recites as
follows:
6. A surge clamp for use on a busway housing, said surge
clamp comprising:
an extruded form being cutable to a length determined by
a particular width of the busway housing, thus forming a surge
clamp having a length equal to said particular width of the
busway housing, said extruded form having at least one
generally flat surface extending along a longitudinal axis of
said surge clamp for continually engaging a generally flat
surface of the busway housing, said extruded form further
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