Appeal No. 2000-1241
Application No. 08/424,156
As discussed above, we find that the limitations which the examiner has
challenged in the claims are broad rather than lacking in enablement or lacking in
particularity. Therefore, we cannot sustain the examiner's rejection of claims 1, 2, 4, 6-
8, 10-14, and 17-19 based upon 35 U.S.C. § 112, second paragraph.
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 find that
appellants have not overcome the prima facie case of obviousness by showing
insufficient evidence by the examiner of obviousness or by rebutting the prima facie
case with secondary evidence. Therefore, we will sustain the rejection of claims 1, 2, 4,
6-8, and 10-14 based upon 35 U.S.C. § 103, and we will not sustain the rejection of
claims 4, 6, 7, and 17-19 based upon 35 U.S.C. § 103.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007