Ex Parte CHEN et al - Page 6



          Appeal No. 2000-1251                                                            
          Application No. 08/843,786                                                      
          obviousness.  In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ 1443,                 
          1444 (Fed Cir. 1992).  See also In re Piasecki, 745 F.2d 1468,                  
          1472, 223 USPQ 785, 788 (Fed Cir. 1984).  The Examiner can                      
          satisfy this burden by showing that some objective teaching in                  
          the prior art or knowledge generally available to one of ordinary               
          skill in the art suggests the claimed subject matter.  In re                    
          Fine, 87 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).                 
          Only if this initial burden is met 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.                                              
               An obviousness analysis commences with a review and                        
          consideration of all the pertinent evidence and arguments.  "In                 
          reviewing the [E]xaminer's decision on appeal, the Board must                   
          necessarily weigh all the evidence and arguments."  In re                       
          Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.  [T]he Board must                 
          not only assure that the requisite findings are made, based on                  
          evidence of record, but must also explain the reasoning by which                
          the findings are deemed to support the agency's conclusion."  In                
          re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.                    
          2002).  With these principles in mind, we commence review of the                
          pertinent evidence and arguments of Appellants and Examiner.                    
                                            6                                             




Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007