Appeal No. 2001-2095 8
Application No. 08/872,659
§120,” it is incumbent upon the examiner to consider at least each of the specific
limitations enumerated above in order to determine whether the teachings of Reichle are
sufficient to establish a prima facie case of obviousness and whether the claimed subject
matter fully complies with the requirements of Section 112, second paragraph with regard
to the definition of M. See Brief, page 6. The fact that “appellants have not chosen to
make this an issue herein,” Brief, page 6, footnote 1, is not relevant to the issue at hand.
We reiterate that the mere allegation by the examiner that “all of the claims are properly
rejected under 35 USC [§] 103 as obvious over REICHLE,” Answer, page 4, is not
sufficient to establish a prima facie case of obviousness.
The examiner must consider whether there is basis in Nagy ‘660 for each of the
newly inserted limitations in the instant application. In the event there is no basis in Nagy
‘660, the examiner must consider whether these limitations are suggested and taught by
Reichle of record such that a prima facie case of obviousness is established with respect to
the claimed subject matter.
DECISION
The rejection of claims 22 through 35, 37 through 51 and 53 through 73 under
35 U.S.C. §103(a) as being unpatentable over Reichle is reversed.
The decision of the examiner is reversed and this application is remanded to the
jurisdiction of the examiner.
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