Appeal No. 2002-0011 Page 3
Application No. 09/179,643
rejections, and to the brief (Paper No. 17, filed June 6, 2001) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant 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 obviousness2 with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 and 2 under 35 U.S.C. § 103. Our reasoning for this determination follows.
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C. § 103
is casting the mind back to the time of invention, to consider the thinking of one of
ordinary skill in the art, guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). Close adherence to this methodology is especially important in cases
where the very ease with which the invention can be understood may prompt one "to
2 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).
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007