Appeal No. 2002-2184
Application No. 08/406,297
the surface. Therefore, the through passages cannot also be the surface passages.
Additionally, the examiner states that “one of ordinary skill in the art would anticipate the
ink, which is expelled from the orifices, comes from the ink supplying paths; and hence
passages, i.e., ink supplying paths communicates with any of the orifices in the orifice
plate.” (See answer at page 13.) While we agree with the examiner that ink passages
would have some function with respect to the supplying of ink, they need not all
“communicate” with the orifices. Therefore, we disagree with the examiner’s apparent
reliance upon anticipation or inherency in that all passages communicate with the
orifices. Therefore, the examiner’s position/argument is not persuasive, and we cannot
sustain the rejection of independent claim 67 and dependent claim 68.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden
of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing
that some objective teaching in the prior art or knowledge generally available to one of
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is met does the
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