Appeal No. 2002-1305 Page 8
Application No. 09/327,966
Obviousness Rejection of Claim 7
Turning to claim 7, the inquiry is whether the subject matter would have been
obvious. "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)). "'A prima facie case of
obviousness is established when the teachings from the prior art itself would . . . have
suggested the claimed subject matter to a person of ordinary skill in the art.'" In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, the examiner fails to allege, let alone show, that the addition of Sneed
cures the aforementioned deficiency of Shupe. Absent a teaching or suggestion of
responding to a triggering event by determining a state of at least one coverage item,
we are unpersuaded of a prima facie case of obviousness. Therefore, we reverse the
obviousness rejection of claim 7.
CONCLUSION
In summary, the rejection of claims 1-6 and 8-20 under § 102(b) and the
rejection of claim 7 under § 103(a) are reversed.
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