Appeal No. 2001-2421
Application No. 09/092,577
In response, Appellants argue that although the claims are
directed to a structure, the claims include “a light conducting
core extruded into a tubular sheath” as a structural component
(brief, page 3). Appellants point out that the “light guide 15"
of Miller is a conventional structure formed of a bundle of
fibers and is not the same as the claimed tubular sheath (id.).
Additionally, Appellants question the propriety of the Examiner’s
requirement for showing improvement of the claimed process over
that of the prior art (reply brief, page 2).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). To reach a conclusion of
obviousness under § 103, the examiner must produce a factual
basis supported by teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Such
evidence is requires in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). The Examiner must not only identify the
elements in the prior art, but also show “some objective teaching
in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead the individual to combine
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