Appeal No. 2002-1145 Page 3
Application No. 09/335,471
and to the brief (Paper No. 17, filed October 15, 2001) and reply brief (Paper No. 19,
filed December 31, 2001) for the appellant's arguments thereagainst.
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, and to the respective
positions articulated by the appellant and the examiner. Upon evaluation of 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 12 and
13 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). However, it is well-
settled that patentability under 35 U.S.C. § 103 may be predicated on discovering the
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