Appeal No. 2003-1111
Application No. 09/164,088
obviousness under § 103, the examiner must produce a factual
basis supported by teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Such
evidence is required in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). The Examiner must not only identify the
elements in the prior art, but also show “some objective teaching
in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead the individual to combine
the relevant teachings of the references.” In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Initially, we find the fact that the Examiner’s position in
the statement of the rejection is different from that in the
response to arguments section in the answer somewhat concerning.
For example, the Examiner’s statement of the rejection (answer,
page 3) indicates that the dependence bank structure is taught by
Yoshioka in column 7 whereas later on page 6 such limitation is
identified as missing in Yoshioka. Additionally, instead of
setting forth a prima facie case of obviousness, the examiner
expands the basis of the rejection in the argument section in an
attempt to fit the claims to the prior art teachings, which is
neither acceptable nor convincing.
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