Appeal No. 2002-1911 Page 12
Application No. 09/598,087
For the reasons set forth above, the decision of the examiner to reject claim 11
under 35 U.S.C. § 102(e) is affirmed.
The obviousness rejection of claims 1 to 3, 7 to 15 and 17 to 19
We will not sustain the rejection of claims 1 to 3, 7 to 15 and 17 to 19 under 35
U.S.C. § 103 as being unpatentable over Mehney in view of Kiuchi.
In rejecting claims 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). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). When it is necessary
to select elements of various teachings in order to form the claimed invention, we
ascertain whether there is any suggestion or motivation in the prior art to make the
selection made by the appellants. Obviousness cannot be established by combining
the teachings of the prior art to produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. The extent to which such
suggestion must be explicit in, or may be fairly inferred from, the references, is decided
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