Appeal No. 2001-0013
Application 08/936,222
features that were mentioned above. We note that appellant again
did not further challenge the examiner’s position as set forth in
the response to arguments section of the answer.
We will not sustain the rejection of these claims because
the examiner has failed to establish a prima facie case of
obviousness. In the case of In re Sang-Su Lee, 277 F.3d 1338, 61
USPQ2d 1430 (Fed. Cir. 2002), the court set forth the standards
the Patent and Trademark Office (“PTO”) must adhere to when
rejecting a claim under 35 U.S.C. § 103. Specifically, when
rejecting a claim for obviousness, the PTO must articulate the
reasons for its decision. Id. at 1342. In particular, the PTO
must show that there is a teaching, motivation, or suggestion of
a motivation to combine references relied on as evidence of
obviousness. Id. at 1343. The responsibility of the Board is
not only to assure that the requisite findings are made, based on
evidence of record, but also to explain the reasoning by which
the findings are deemed to support the agency’s conclusion. Id.
at 1342.
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