Appeal No. 2002-0037 Page 3
Application No. 08/899,292
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 5 and 10 to 22 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 final rejection (p. 3), the examiner (1) set forth the teachings of Moore;
(2) ascertained that the only difference between Moore and the subject matter of claims
1 and 12 (the independent claims on appeal) was that Moore lacked a drive roller for
driving Moore's pattern m; and (3) determined it would have been obvious to one having
ordinary skill in the art as a matter of common sense to provide a drive roller for
Moore's pattern to reduce the drag of the pattern through the apparatus and thus
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