Appeal No. 2001-1855
Application No. 08/897,440
storage and retrieval of image data disclosed by Wolf. Nor do we find any convincing
rationale as to why Wolf may be deemed to teach that which the rejection attributes to
the reference. Nor does the rejection offer any interpretation of the relevant claim terms
to show that an artisan would consider the teachings of Wolf as falling within the ambit
of the claims.
“[T]he Board must not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which the findings are
deemed to support the agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002). In view of the requirements for establishing
inherency, we cannot simply attempt to fill in the gaps in the instant rejection by adding
our speculation to the express teachings of the references.
The examiner bears the initial burden of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In view of appellants’ contesting of an essential finding in support of a
conclusion of obviousness, the finding being unsupported by evidence in this record, we
do not sustain the rejection of claims 1-14 under 35 U.S.C. § 103 as being unpatentable
over Hamanaka and Wolf. Since the remaining rejections depend on Wolf for the
teaching that appellants have shown to be deficient, neither do we sustain the section
103 rejections of claims 15-32.
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