Appeal No. 2002-2238
Application No. 09/107,768
expressly or inherently described, in a single prior art
reference." Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). The examiner bears the
initial burden, on review of the prior art or on any other ground,
of presenting a prima facie case of unpatentability. If that
burden is met, the burden of coming forward with evidence or
argument shifts to the applicant. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Where the Examiner
fails to establish a prima facie case, the rejection is improper
and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988).
The examiner has failed to establish a prima facie case of
anticipation for claims 24-27; as a consequence, this portion of
the rejection will be reversed as well.
We note in passing that claim 4 is included in this statement
of rejection as being anticipated by Mahalingam. Claim 4 depends
from Claim 3, which is only rejected as being rendered obvious
within the meaning of 35 U.S.C. §103(a) by Mahalingam. How
dependent claim 4 is alleged to be anticipated is a mystery to us.
There is no explanation in the examiner’s answer or the final
rejection relating to claim 4.
The Rejection of Claims 3, 7, 13, 17-23, and 28-30
Under 35 U.S.C. §103(a)
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