Appeal No. 2002-0510 Page 17
Application No. 09/139,309
"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). Here, the examiner fails to allege, let
alone show, however, that Xu teaches or would have suggested the limitations of
claims 9 and 10. We will not "resort to speculation," In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), as to his unstated position. Therefore, we
reverse the obviousness rejection of claims 9 and 10 over Xu.
Obviousness Rejection of Claims 11-16 over Slepian and Hyatt
At the outset, we note that the appellants do not argue claims 11-16 separately.
Therefore, claims 12-16 stand or fall with representative claim 11. With this
representation in mind, we address the main point of contention between the examiner
and the appellants. The examiner asserts, "Hyatt discloses conductive and
semiconductive particles at 70% at col. 5, lines 20-40, for the purpose of providing
overvoltage protection and to tailor the resistance to the desired value and altering the
clamping voltage, col. 9, lines 13-21. It would have been obvious in view of Hyatt to
employ particles in the claimed range in the device of . . . Slepian for the purpose of
altering the resistance and clamping voltage." (Examiner's Answer at 7.) The
Page: Previous 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Next
Last modified: November 3, 2007