Appeal No. 1999-2163
Application 08/950,524
Figure 1 and col. 8, ll. 9-36). Similarly, Pulskamp does not
teach any coating operations after the insertion of the insert
sheet (see Figure 3 and col. 5, l. 13-col. 6, l. 39). Thus,
assuming arguendo that it would have been obvious to insert the
insertion means of Pulskamp into the process and apparatus of
Ritter, one of ordinary skill in this art would have inserted
such means in the same location as the sheet inserting station of
Ritter, i.e., downstream of any coating operations. The subject
matter recited in claim 1 on appeal requires that the inserting
operation be located upstream from at least one coating operation
(see claim 1, steps (b) and (c), and the Brief, page 5).
The examiner has not met the initial burden of proof in
establishing a prima facie case of obviousness by showing any
convincing suggestion, motivation or reasoning why one of
ordinary skill in this art would have moved the location of the
inserting station and coating operations. The “examiner’s
position” that one of ordinary skill in this art would perform
the steps of overlapping and coating in a sequence consistent
with the “desired product” pertains to the main difference over
the applied prior art but the examiner has failed to support this
“position” by any factual basis or convincing reasoning. See In
re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir.
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