Appeal No. 2001-1527
Application No. 08/753,265
regard to Rejection 1, we find, as the Appellants urge (Brief
at 9), that the specification discloses:
Temperature sensors in the form of thermocouples 24 are
strategically positioned around the periphery of the
male mold member 4 to regulate the temperature of the
mold in the area of the serpentine passage 18 serving
to cool the central area of the mold 2. [Specification
at 5, ll. 3–8.]
We regard this disclosure, by itself or in conjunction with
Figure 4, which it describes, as sufficient evidence supporting
recitation of the limitation that the mold is to be cooled “only”
at the center section. The examiner’s failure to come forward
with any evidence in support of the rejection, showing that this
passage is somehow inadequate, is fatal, and we reverse.
Rejection 2
The initial burden is on the examiner to establish a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“The examiner . . . bears
the initial burden . . . of presenting a prima facie case of
unpatentability.”). “Although a reference need not expressly
teach that the disclosure contained therein should be combined
with another, the showing of combinability, in whatever form,
must nevertheless be ‘clear and particular.’” Winner
International Royalty Corp. v. Wang, 202 F.3d 1340, 1348–49,
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