Appeal No. 2001-1679 Page 4
Application No. 08/849,336
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
As noted in Manual of Patent Examining Procedure (MPEP) § 2141
Patent examiners carry the responsibility of making sure that the standard
of patentability enunciated by the Supreme Court and by the Congress is applied
in each and every case. The Supreme Court in Graham v. John Deere [Co.], 383
U.S. 1, 148 USPQ 459 (1966), stated:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at issue are
to be ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background, the obviousness or nonobviousness of
the subject matter is determined. Such secondary considerations as
commercial success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding the origin
of the subject matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquires may have relevancy. . .
This in not to say, however, that there will not be difficulties in
applying the nonobviousness test. What is obvious is not a question upon
which there is likely to be uniformity of thought in every given factual
context. The difficulties, however, are comparable to those encountered
daily by the courts in such frames of reference as negligence and
scienter, and should be amenable to a case-by-case development. We
believe that strict observance of the requirements laid down here will
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