Appeal No. 2002-2283
Application No. 08/882,513
The problem with the examiner’s position is that the examiner
provides no factual basis for these two inferences. As stated in
Ex parte Tanksley, 37 USPQ2d 1382, 1386 (Bd. Pat. App. & Int.
1994):
With respect to the rejections under 35 U.S.C. § 103,
we find that the cited prior art provides no suggestion
which would have led a person having ordinary skill from
“here to there,” . . . . We have no doubt that the prior
art could be modified in such a manner to arrive at
appellants’ . . . [invention]. The mere fact, however,
that the prior art could be modified would not have made
the modification obvious unless the prior art suggests
the desirability of the modification. In re Gordon,
733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) . . . .
Here, the reference the examiner relies upon would not itself have
rendered the subject matter appellants claim obvious to a person
having ordinary skill in the art.
Ultimately, the examiner asks this Board to affirm the
appealed rejection for reasons denounced in In re Ochiai, 71 F.3d
1565, 1570-71, 37 USPQ2d 1127, 1132 (Fed Cir. 1995). This Board
recommends that the examiner reread the Federal Circuit’s opinion
in Ochiai which, we had thought, put to rest generalized Durden-
based rejections of the type here appealed. We find no need to
paraphrase the well-stated views of the Federal Circuit.
The examiner has the initial burden of proof to show that the
subject matter applicants claim is unpatentable. Only after a
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