Appeal No. 2002-0607
Application No. 09/258,138
The initial burden of establishing a basis for denying
patentability to a claimed invention rests upon the examiner. In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). If the examiner fails to establish a prima
facie case, the rejection is improper and will be overturned.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). As stated by Judge Plager in his concurring opinion
in Oetiker, 977 F.2d at 1449, 24 USPQ2d at 1447:
The process of patent examination is an
interactive one . . . . The examiner cannot sit mum,
leaving the applicant to shoot arrows into the dark
hoping to somehow hit a secret objection harbored by
the examiner. The ‘prima facie case’ notion, the
exact origin of which appears obscure . . . ,
seemingly was intended to leave no doubt among
examiners that they must state clearly and specifically
any objections (the prima facie case) to
patentability, and give the applicant fair opportunity
to meet those objections with evidence and argument.
To that extent the concept serves to level the playing
field and reduces the likelihood of administrative
arbitrariness.
In the present case, the examiner has made no explicit
findings regarding, among other things, (1) the scope and
contents of the applied prior art, (2) the differences between
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