Appeal No. 2002-0049 Page 3
Application No. 09/317,538
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. As a consequence
of our review, we make the determinations which follow.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A case of obviousness is established by
presenting evidence that the reference teachings would appear to be sufficient for one
of ordinary skill in the relevant art having the references before him to make the
proposed combination or other modification. See In re Lintner, 458 F.2d 1013, 1016,
173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed
subject matter is obvious must be supported by evidence, as shown by some objective
teaching in the prior art or by knowledge generally available to one of ordinary skill in
the art that would have led that individual 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). Rejections based on 35 U.S.C. § 103 must rest
on a factual basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. The examiner may not, because of doubt that the
invention is patentable, resort to speculation, unfounded assumption or hindsight
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