Appeal No. 2003-0204 Page 4
Application No. 09/096,123
an output devices to inform the operator with the proper steps need to be done,
in order to reduce the price of the apparatus.
On pages 1-2 of the reply brief (Paper No. 31, filed August 2, 2002), the
appellants argue that there is no motivation, absent the use of their own disclosure, for
a person of ordinary skill in the art to have modified DePoint to arrive at the claimed
invention.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants' specification and claims, to the DePoint patent, and to the respective positions
articulated by the appellants and the examiner. Upon evaluation of all the evidence
before us, it is our conclusion that the evidence adduced by the examiner is insufficient to
establish a prima facie case of obviousness with respect to the claims under appeal.
Accordingly, we will not sustain the examiner's rejection of claims 279 to 284 and 287 to
294 under 35 U.S.C. § 103. Our reasoning for this determination follows.
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 would have led one of ordinary skill in the art to
arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007