Appeal No. 2000 0921
Application No. 08/366,090
Discussion
The initial burden of establishing a prima facie basis to deny
patentability to a claimed invention rests upon the examiner. In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). In making a rejection on the ground that claimed subject
matter would inherently be present in the apparatus or process
described by a reference, the examiner bears the initial burden of
making out a prima facie case, as by providing a basis in fact
and/or technical reasoning which reasonably supports the position
that what is allegedly inherent would necessarily flow from the
teachings of the prior art. See Ex parte Levy, 17 USPQ2d 1461,
1464 (BPAI 1990) and the cases cited therein. If examination at
the initial stage does not produce a prima facie case of
unpatentability, then without more the applicant is entitled to a
patent. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1990).
The main issue in this case is whether Roessler discloses a
fastener tab comprising a substrate and a mechanical fastener
component wherein the tab has a Gurley stiffness value of less than
about 1000 milligrams in the area of the tab that includes the
mechanical fastener component. Because we do not agree with the
examiner that the claimed invention necessarily flows from the
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