Appeal No. 2003-1970 Page 4
Application No. 09/586,526
(Aylward, col. 4, l. 74 to col. 5, l. 10 (emphasis added)).
The Examiner bears the initial burden of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If the Examiner
fails to present a prima facie case of unpatentability, then the rejection cannot stand. Id. Where,
as here, the Examiner bases the rejection on the obviousness of modifying an apparatus taught in
the prior art, the Examiner must establish that there was some reason, suggestion, or motivation
to make the modification. In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir.
1998). The Examiner must identify specifically the principle, known to one of ordinary skill in
the art, that suggests the claimed combination. Rouffet, 149 F.3d at 1359, 47 USPQ2d at 1459.
While the reason, suggestion, or motivation need not be explicitly stated in the references
themselves, the factual inquiry of whether to combine references must be thorough and searching
and be based on objective evidence of record. In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430,
1433 (Fed. Cir. 2002).
In the present case, the Examiner’s factual findings fall short of establishing a prima facie
case of obviousness. This is because the Examiner has failed to explain how the suggestion in
Aylward that gold and nickel are both useful as the catalyst in a catalyst-Teflon mixture would
have suggested to one of ordinary skill in the art the substitution of gold for nickel in the coating
of Naoto. The Examiner points to no evidence that indicates that gold was understood as an
alternative to nickel in the exposed coating of an ink jet recording head. While the references
both use Teflon to provide hydrophobicity in a metal-Teflon coating, that is not enough to
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