Appeal No. 2001-0008
Application 09/298,572
at lower temperatures which result in an orange peel effect.
Id.
Discussion
The initial burden of presenting a prima facie case
of obviousness rests on the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). To
establish a prima facie case of obviousness, there must be:
1. some suggestion or motivation to modify a
reference or combine reference teachings;
2. a reasonable expectation of success; and
3. a teaching or suggestion of all of the claim
limitations in the prior art reference or combined references.
See, generally, Manual of Patent Examining Procedure (MPEP)
§§ 2142-2143.
The wording of the Examiner’s rejection is ambiguous
and we find it unclear as to precisely how the references are
combined. Therefore, we interpret the Examiner’s rejection
based on what we consider the strongest arguments against
patentability given the teachings of the cited references,
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