Ex Parte SHINOHARA et al - Page 5




              Appeal No. 2002-1236                                                                                      
              Application No. 08/359,743                                                                                


              not persuasive, and we will sustain the rejection of independent claim 1.  Appellants rely                
              upon this same argument for dependent claims 3, 4, and 31.  Therefore, we will sustain                    
              the rejection of dependent claim 3, 4, and 31.                                                            
                                                      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 the reference teachings would appear to be                        
              sufficient for one of ordinary skill in the relevant art having the references before him to              
              make the proposed combination or other modification.  See In re Lintner, 458 F.2d                         
              1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  Furthermore, the conclusion that the                          
              claimed subject matter is prima facie obvious must be supported by evidence, as                           
              shown by some objective teaching in the prior art or by knowledge generally available to                  
              one of ordinary skill in the art that would have led that individual to combine the relevant              
              teachings of the references to arrive at the claimed invention.  See In re Fine, 837 F.2d                 
              1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Rejections based on     § 103                          
              must rest on a factual basis with these facts being interpreted without hindsight                         
              reconstruction of the invention from the prior art.  The examiner may not, because of                     
              doubt that the invention is patentable, resort to speculation, unfounded assumption or                    
              hindsight reconstruction to supply deficiencies in the factual basis for the rejection.  See              

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