Appeal No. 2002-0174 Page 4
Application No. 09/190,373
find ourselves in agreement with appellants since the examiner
has failed to carry the burden of establishing a prima facie case
of obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1471-1472, 223 USPQ 785, 787-788 (Fed. Cir. 1984).
Accordingly, we will not sustain the examiner’s stated rejection.
In a rejection under 35 U.S.C. § 103, it is fundamental that
all elements recited in a claim must be considered and given
effect in judging the patentability of that claim against the
prior art. See In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ
789, 791 (CCPA 1974). Thus, a prima facie case of obviousness is
established by showing that some objective teachings or
suggestions in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in the art
would have led that person to the claimed invention, including
each and every limitation of the claims, without recourse to the
teachings in appellants’ disclosure. See generally In re
Oetiker, 977 F.2d 1443 at 1447-48, 24 USPQ2d 1443 at 1446-47.
The prior art as applied must be such that it would have provided
one of ordinary skill in the art with both a suggestion to carry
out appellants’ claimed invention and a reasonable expectation of
success in doing so. See In re Dow Chemical Co., 837 F.2d 469,
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