Appeal No. 2002-0029 5
Application No. 09/437535
to perform the claimed functions, one of ordinary skill in the art would find the claimed
method to be an obvious step in light of the disclosed structure.”
The initial burden of establishing a basis for denying patentability to a claimed
invention rests upon the examiner. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984). In establishing a prima facie case of obviousness under 35
U.S.C. 103, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify the prior art reference or to combine
reference teachings to arrive at the claimed invention. Ex parte Clapp, 227 USPQ 972,
973 (BPAI 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally
available to one of ordinary skill in the art and not from appellants’ disclosure. See, for
example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434,
1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
In the present case, the examiner has failed to point out any teaching,
suggestion or inference in the prior art, or knowledge generally available to one of
ordinary skill in the art to support the conclusion that the claimed subject matter as a
whole would have been obvious to one of ordinary skill in the art. Thus, the examiner
has failed to meet the examiner’s initial burden of establishing a prima facie case of
obviousness. For this reason alone the standing rejection of claims 20-22, 24, 25, 28-
30, 32 and 33 as being unpatentable over White cannot be sustained.
LJS/
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