Appeal No. 2003-2149 Page 6
Application No. 09/498,379
Initially, we note that the examiner's above-quoted conclusions of what would
have been obvious to one of ordinary skill in the art set forth in the examiner's response
to the appellant's argument (answer, pp. 3-4) are not part of the actual rejection under
appeal.
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
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
As set forth in the Manual of Patent Examining Procedure (MPEP) § 2141:
Office policy has consistently been to follow Graham v. John Deere Co.[1]
in the consideration and determination of obviousness under 35 U.S.C. 103. As
quoted above, the four factual inquires enunciated therein as a background for
determining obviousness are briefly as follows:
(A) Determining of the scope and contents of the prior art;
(B) Ascertaining the differences between the prior art and the claims in
issue;
(C) Resolving the level of ordinary skill in the pertinent art; and
1 Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966)
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