Appeal No. 2002-0751 Page 4
Application No. 09/336,051
Appellant argues that the examiner has not made out a prima facie case
of obviousness. In particular, Appellant argues that the examiner has pointed to
nothing in the prior art that would have suggested a cryogenic grinding step, as
required by the claims. See the Appeal Brief, page 5. Appellant also argues
that, even if a prima facie case had been made, the specification presents
evidence of unexpected results to rebut a conclusion of obviousness. See the
Appeal Brief, pages 5-7.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). “It is well-established that before a conclusion of obviousness
may be made based on a combination of references, there must have been a
reason, suggestion, or motivation to lead an inventor to combine those
references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). “Even when obviousness is
based on a single prior art reference, there must be a showing of a suggestion or
motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d
1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In this case, we agree with Appellant that the cited reference does not
support a prima facie case of obviousness. McDermott discloses a process of
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