Appeal No. 2001-2268
Application 08/922,581
Appellants argue generally that the examiner has failed
to establish a prima facie case of obviousness because the
examiner has not supported the rejection with evidence when
challenged by appellants. Appellants also argue that there is no
motivation to combine the knowledge generally available in the
art with the teachings of Foelkel as proposed by the examiner.
Appellants also argue the various claims individually, and
appellants explain why each of the claim limitations dismissed by
the examiner would not have been obvious to the artisan [brief,
pages 24-36]. The examiner responds that he sees no reason why
prior art must be furnished in support of his position that the
claimed invention would have been obvious to the artisan [answer,
pages 12-16]. Appellants respond that the examiner has provided
no evidence to support the rejection and there is no motivation
to modify Foelkel in the manner proposed by the examiner [reply
brief].
We will not sustain the examiner’s rejection under 35
U.S.C. § 103 with respect to any of the claims on appeal because
the examiner has failed to establish a prima facie case of
obviousness. As noted above, the examiner has the burden of
initially presenting a prima facie case of obviousness. The
examiner cannot satisfy this burden by simply dismissing
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