Appeal No.2000-2244 Page 3
Application No. 08/660,709
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. "In rejecting claims under 35
U.S.C. Section 103, the examiner bears the initial burden of presenting a prima facie
case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992)). "'A prima facie case of obviousness is established when the
teachings from the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976)).
Here, Johnston's "circuit 16 totalizes and stores in the data RAM memory 34 the
values of the electric energy parameters to be measured including kilowatt hours and
kilowatt demand for the predetermined high rate, mid rate and low rate periods during
each day." Col. 6, ll. 22-27 (emphasis added). We are not persuaded that the
reference's kilowatt hours and kilowatt demand represent different types of energy. To
the contrary, we agree with the appellants that these are measurements of "a single
'type' of electrical energy - real energy (watthours)." (Req. Reh'g at 3.)
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