Appeal No. 2002-0755 Page 4
Application No. 08/999,803
In rejecting the claim 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). In order to establish a prima facie
case of obviousness, it is fundamental that all elements recited
in each claim must be considered and given appropriate effect by
the examiner in judging the patentability of that claim against
the prior art. See In re Geerdes, 491 F.2d 1260, 1262-63, 180
USPQ 789, 791 (CCPA 1974). Here, the examiner’s rejection set
forth in the answer fails to meet that basic test for the
presentation of a sustainable § 103 rejection.
In particular, the examiner (answer, pages 4 and 5) takes
the position that it would have been obvious to modify the
electromagnetic coil coating process of Thigpen by employing the
one-component curable resin composition of Berner therein in
place of the two-component resin of Thigpen. According to the
examiner, that modification of the Thigpen process would have
been suggested to one of ordinary skill in the art since any
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