Appeal No. 2003-1516
Application 09/569,700
specification without unsupported, speculative assumptions.3 Cf. In re Steele, 305 F.2d 859,
862-63, 134 USPQ 292, 295 (CCPA 1962); Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat.
App. & Int. 1993).
Turning now to consideration of the examiner’s application of Tsai to appealed claims 1
and 19, it is well settled that the examiner has the burden of making out a prima facie case of
anticipation under § 102(b) in the first instance by pointing out where each and every element of
the claimed invention, arranged as required by the claim, is described identically in the reference,
either expressly or under the principles of inherency. See generally, In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co.,
730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). It is further well settled that in order
to establish a prima facie case of obviousness under § 103(a), the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims arranged as
required by the claims, without recourse to the teachings in appellant’s disclosure. See generally,
In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool
Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir.
1996); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re
Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The dispositive issue in this appeal is whether Tsai describes an embodiment that
3 We decline to exercise our authority under 37 CFR § 1.196(b) (2003) and enter on the record a
new ground of rejection of the appealed claims with respect to the issues we have raised above
under § 112, second paragraph, leaving it to the examiner to address this issue upon any further
consideration of the appealed claims subsequent to this appeal. In addition to the issues with
respect to “unintended separation,” we further observe that appealed claim 5 refers to “said label”
of appealed claim 1 on which claim 5 depends, but claim 1 does not specify a “label” per se.
Thus, the question arises of whether appealed claim 5 as presently stated is properly dependent
on appealed claim 1, which consideration would also affect appealed claims 6 through 9 that are
directly or ultimately dependent on claim 5, and the examiner should considered this matter as
well.
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