Appeal No. 2004-0193 Page 8
Application No. 09/165,272
In view of the above-noted determinations, we conclude that Joschko does not
anticipate the subject matter of claim 32. Accordingly, the decision of the examiner to
reject claim 32 under 35 U.S.C. § 102(b) is reversed.1
The obviousness rejection
We will not sustain the rejection of claims 15 to 19, 21, 24, 29, 33 and 34 under
35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562
(CCPA 1972).
Claims 15, 16 and 33, the independent claims subject to this ground of rejection,
read as follows:
1 The examiner should consider a search of class 209 (Classifying, Separating, and Assorting
Solids), especially subclass 707 (Items separated by tipping, rolling, or sliding off support under force of
gravity), for the subject matter of claim 32.
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