Appeal No. 2001-2095 5
Application No. 08/872,659
in REICHLE, all of the claims are properly rejected under 35 U.S.C. § 103 as obvious
over REICHLE.” See Answer, page 4. We disagree with the examiner’s oversimplified
analysis. To establish a prima facie case of obviousness, the examiner must show that the
intervening reference to Reichle contains the requisite teachings and suggestion of the
subject matter added in the instant continuation-in-part application. As no such analysis is
present in the Answer before us, the examiner has failed to establish a prima facie case of
obviousness with respect to the claimed subject matter. Furthermore, the appellants have
properly argued that, “the burden of going forward to establish a prima facie case is with
the Office, not with appellants.” See Reply Brief, page 6. Accordingly, we reverse the
decision of the examiner.
REMAND TO THE EXAMINER
On consideration of the record we remand the application to the jurisdiction of the
examiner for appropriate action in accordance with our findings infra. Upon return of this
application to the examiner, the examiner should reconsider the patentability of the
claimed subject matter, with respect to at least claim 71 over the individual reference to
Reichle.
An analysis of claim 71, with respect to each of the additional limitations present in
the aforesaid claim in comparison with the teachings of Reichle and the original Nagy ‘660
patent would appear to support the position that a prima facie case of obviousness is
established by Reichle. The issue to be considered is whether that portion of the claimed
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