Appeal No. 2001-2213 Page 3
Application No. 09/399,418
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. Upon evaluation of all
the evidence before us, it is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness with respect to the claims under
appeal. Accordingly, we will not sustain the examiner's rejection of claims 1 to 4 under 35
U.S.C. § 103. Our reasoning for this determination follows.
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).
In the rejection before us in this appeal (answer, pp. 3-4) the examiner determined
that (1) Walsh discloses a tool comprising a compressible elastomer rubber sponge
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