Appeal No. 2000-1161
Application No. 09/318,354
It would have been obvious . . . to modify Krebs’
instrument as taught by Lieber to include a first
plurality of said actuators extend in a first
direction from a first group of said string posts
and a second plurality of said actuators extend in a
second direction from a second group of said string
posts for the purpose of tuning the instrument.
[Emphasis ours]
We do not agree with the examiner’s motivation to combine in
view of the established law that in rejecting claims under 35
U.S.C.
§ 103, the examiner bears the initial burden of presenting a
prima facie case of obviousness (see In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re
Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
1992)), which is established when the teachings of the prior
art itself would appear to have suggested the claimed subject
matter to one of ordinary skill in the art (see In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)).
In our view, here the examiner has used for motivation
the road map and the blueprint of the appellants’ invention.
This is impermissible. We find no suggestion either in Lieber
or in Krebs or in the combination of Lieber and Krebs which
would have led an artisan to make the modification suggested
by the examiner. The examiner has not pointed to any
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