Appeal No. 2003-1051
Application No. 09/247,134
the examiner has not provided us with a convincing reason for
modifying the references in order to achieve this claimed subject
matter.
Assuming, arguendo, the examiner has found each and every
claimed element, the mere finding of each claimed element in
separate references does not, by itself, establish a valid reason
for combining the references in a way to result in the claimed
subject matter. Since the examiner has not convinced us of any
reason that would have led the artisan to combine the references,
we find that the examiner has not established a prima facie case
of obviousness.
We will not sustain the rejection of claims 1-6 and 8-26
under 35 U.S.C. § 103 because it is the examiner’s burden, in the
first instance, to establish prima facie obviousness. However,
we note that had the examiner made such a case, appellants’
arguments might not have been sufficient to overcome a prima
facie case because appellants, for all of their arguments citing
differences between the applied references and the disclosed
invention, never really point out any specific claim language
they believe to distinguish over the prior art.
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