Appeal No. 2002-1071 Page 3
Application No. 09/369,312
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. Upon evaluation of
the evidence of obviousness adduced by the examiner (i.e., the applied prior art
references), it is our conclusion that the evidence of obviousness is insufficient to
establish a prima facie case of obviousness with respect to the claims under appeal.1
Accordingly, we will not sustain the examiner's rejection of claims 1 to 5 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.
1 Accordingly, there is no need in this case to weigh the evidence of unobviousness submitted by
the appellants (i.e., the declaration of Hideaki Kawamatsu dated September 28, 2001). We note that
Figures 1 and 2 attached to that declaration and discussed on page 9 thereof may be incorrectly
designated. That is, Figure 1 appears to show the shaft of the present invention since the number of plies
is constant and Figure 2 appears to show the shaft disclosed in Kawamatsu's patent since the number of
plies is not constant. Moreover, neither figure appears to show the two innermost body sheets arranged
as shown in Figure 4 of Kawamatsu's patent (i.e., both sheets 6a and 6b start adjacent the mandrel 7).
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