Ex Parte Shue et al - Page 6



                   Appeal No. 2003-1971                                                                                                                                   
                   Application No. 09/489,970                                                                                                                             

                   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 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,                                                                                            



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