Appeal No. 2003-0025
Application No. 09/019,871
or falling with independent claim 9. We will not include these claims in the second
group since they have not been rejected by the examiner and this issue is not before
us. Therefore, we will address claims 1, 9, and 19 as the representative claims for
each of the three groups and address appellants’ arguments thereto.
35 USC § 103
To reject claims in an application under section 103, an examiner must
show an unrebutted prima facie case of obviousness. See In re Deuel,
51 F.3d 1552, 1557, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995). In the
absence of a proper prima facie case of obviousness, an applicant who
complies with the other statutory requirements is entitled to a patent. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting
the prima facie case with evidence of secondary indicia of
nonobviousness. In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453,
1455 (Fed. Cir. 1998).
The examiner maintains that Sugai teaches the claimed invention, but for the
biasing member exerting a substantially constant force on the brush surface and that
Poet teaches a biasing member exerting a substantially constant force on the brush
surface for increasing the brush life. The examiner maintains that both references are
“from the same field of endeavor” and that the “purpose disclosed by one inventor
would have been recognized in the pertinent art of the others.” (See answer at pages
4-5.) While we are not exactly sure what the examiner means by the second part of the
motivation statement, we are of the reasoned opinion that optimizing the electrical and
mechanical life of the brush would have been quite a desirable goal as taught by Poet
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