Appeal No. 2000-1901
Application 08/506,032
reference relied upon. Note MPEP § 706.02(j) and MPEP § 1208 for
the correct methodologies.
It is not the Board's burden or the burden of any panel of
this Board to initially assert and to even formulate the details
of a prima facie case of obviousness within 35 U.S.C. 103. This
burden of proof rests solely upon the examiner. Note, e.g.,
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
The examiner may choose to first avail himself or herself of
the provisions of 37 CFR § 1.75(b) and the discussion thereof
within MPEP § 2173.05(n) as to the examiner's characterization at
page 8 of the answer that there are an "unreasonable number of
claims in the file." As noted in subsection (b) of 37 CFR
§ 1.75, the claims must differ substantially from each other AND
not be unduly multiplied. To the extent the examiner may
determine that the claims do not differ substantially from each
other, then they are in inherently unduly multiplied and not in
compliance with this rule. The analysis as to this rule proceeds
by first comparing each independent claim for relative compliance
with this rule, then to a corresponding comparison of the
dependent claims.
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