Appeal No. 2003-0041
Application No. 09/087,528
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden
of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ 1443, 1444 (Fed Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed Cir. 1984). The Examiner can satisfy this burden by
showing that some objective teaching in the prior art or knowledge generally available
to one of ordinary skill in the art suggests the claimed subject matter. In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is
met does the burden of coming forward with evidence or argument shift to the
Appellants. Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki, 745
F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of all the
pertinent evidence and arguments. "In reviewing the [E]xaminer's decision on appeal,
the Board must necessarily weigh all of the evidence and arguments." In re Oetiker,
977 F.2d at1445, 24 USPQ2d at 1444. [T]he Board must not only assure that the
requisite findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the agency's conclusion." In re
Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
Appellants argue that Muszynski is not properly combinable with Bazarjani. See
page 6 of the brief. In particular, Appellants point out that the Examiner has conceded
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