Appeal No. 2001-1007
Application No. 08/937,025
With respect to independent claims 7, 24 and 39, we note that the limitations are
similar to those addressed above, and we will not sustain the rejection thereof.
Additionally, we note that the language of independent claim 7 is very similar to that of
dependent claim 3 which the examiner has objected to and indicated would be
allowable if rewritten in independent form.
35 USC § 103
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden
of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can satisfy this
burden by showing that some objective teaching in the prior art or knowledge generally
available to one of ordinary skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial
burden is met does the burden of coming forward with evidence or argument shift to the
Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki, 745
F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of all the
pertinent evidence and arguments. "In reviewing the [E]xaminer's decision on appeal,
the Board must necessarily weigh all of the evidence and arguments." In re Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must not only assure that the
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