Appeal No. 1999-2284
Application 08/798,443
does the burden of coming forward with evidence or argument shift to
the Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ 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. 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"). Accordingly, we now commence our analysis
with a consideration of claim 4.
Dependent claims 4 and 10-12 incorporate all the limitations of
independent claim 1. We have already established that Vettel does
not teach the claim 1 limitation of "a spindle motor, coupled to and
extending partially from the enclosure, the spindle motor having a
shaft coupled to the disk for rotating the disk." Neither does
anything in Vettel, either alone or in combination, suggest
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