Appeal No. 2003-0655
Application No. 09/406,001
1817, 1821 (Fed. Cir. 1994). Indeed, in ex parte patent prosecution, hearsay may properly be
considered. See, e.g., In re Reuter, 670 F.2d 1015, 1020-21, 210 USPQ 249, 254-55 (CCPA
1981).
II. Whether the Rejection of Claim 1 Under 35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in the
art the obviousness of the invention as set forth in claim 1. Accordingly, we reverse.
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 USPQ2d 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 USPQ2d 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 argument.” Oetiker, 977 F.2d at 1445, 24 USPQ2d at
5
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