Appeal No. 2002-0438 Page 4
Application No. 09/181,671
may be separable, thus the rejection fails to provide a reasonable expectation of
success in arriving at the claimed invention. See Appeal Brief, page 6.
We agree.
The burden is on the examiner to make a prima facie case of
obviousness, and the examiner may meet this burden by demonstrating that the
prior art would lead the ordinary artisan 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, 1598-99 (Fed. Cir. 1988). The findings of fact underlying
the obviousness rejection, as well as the conclusions of law, must be made in
accordance with the Administrative Procedure Act, 5 U.S.C. § 706 (A), (E)
(1994). See Zurko v. Dickinson, 527 U.S. 150, 158, 119 S.Ct. 1816, 1821, 50
USPQ2d 1930, 1934 (1999). Findings of fact underlying the obviousness
rejection, upon review by the Court of Appeals for the Federal Circuit, must be
supported by substantial evidence within the record. See In re Gartside, 203
F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000). In addition, in order
for meaningful appellate review to occur, the examiner must present a full and
reasoned explanation of the rejection. See, e.g., In re Lee, 277 F.3d 1338, 1342,
61 USPQ2d 1430, 1432 (Fed. Cir. 2002).
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