Appeal No. 1999-2464
Application No. 08/701,292
The Examiner has also rejected the claims under 35 U.S.C. § 103(a) as obvious over
Maruyama. The Examiner states “[t]his rejection is set forth in prior Office action, Paper
No. 11.” (Answer, p. 3). However, paper no. 11 does not provide an analysis of the claims
under 35 U.S.C. § 103. The initial burden of presenting evidence to support a prima facie
case of obviousness rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). In appropriate circumstances, a single prior art
reference can render a claim obvious. See, e.g., B.F. Goodrich Co. v. Aircraft Braking Sys.
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re O’Farrell, 853
F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988). However, there must be a showing
of a suggestion or motivation to modify the teachings of that reference to the claimed
invention in order to support a conclusion of obviousness. The Examiner has failed to
provide the requisite analysis to support a rejection of the claims under § 103.
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