Appeal No. 2001-0326
Application 09/007,138
necessary for a package design program as required in the
explicit language of claim 1.” See Appeal Brief, Paper No. 9,
page 9, lines 28-32.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
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 Appellant.
Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
“[E]vidence of a suggestion, teaching, or motivation to
combine may flow from the prior art references themselves, the
knowledge of one of ordinary skill in the art, or, in some cases,
from the nature of the problem to be solved, see Pro-Mold & Tool
Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
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