Appeal No. 2001-0109
Application 08/871,898
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.
As pointed out by our reviewing court, the Patent and
Trademark Office must first determine the scope of the claim.
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