Appeal No. 1999-0591
Application 08/581,905
As noted above, the examiner has the burden of initially
presenting a prima facie case of obviousness. The examiner
cannot satisfy this burden by simply dismissing differences
between the claimed invention and the teachings of the prior art
as being obvious. The examiner must present us with an
evidentiary record which supports the finding of obviousness. It
does not matter how strong the examiner’s convictions are that
the claimed invention would have been obvious, or whether we
might have an intuitive belief that the claimed invention would
have been obvious within the meaning of 35 U.S.C. § 103. Neither
circumstance is a substitute for evidence lacking in the record.
Our reviewing court requires that the finding of obviousness be
based on an evidentiary record which clearly supports such a
finding. Whether there is prior art available which would render
these appealed claims unpatentable we cannot say. We can say,
however, that the record presently before us does not support the
rejection as formulated by the examiner.
Since each rejection made by the examiner fundamentally
relies on the teachings of Kinsman and the admitted prior art,
and since none of the additionally applied references overcome
the basic deficiency in this combination, we do not sustain the
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