Appeal No. 2002-1194
Application No. 08/534,808
Initially, we note that in rejecting claims under 35 U.S.C.
§ 103, it is the Examiner who 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). Furthermore, in considering the question of the
obviousness of the claimed invention in view of the prior art
relied upon, the Examiner is expected to make the factual
determination set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. See also In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Here, this burden
was not satisfied until the Examiner’s Answer pointed to the
teachings in POCSAG that allegedly read on each claimed
limitation. Appellants are not required to provide evidence of
patentability until this burden is shifted and therefore, prior
to this point, could not reasonably be expected to speculate the
Examiner’s position and provide a convincing rebuttal.
Nevertheless, our review of POCSAG reveals that, as
recognized by Appellants (brief, page 8), the reference relates
to standardized code format for large capacity wide-area
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