Ex Parte Sahr et al - Page 3




              Appeal No. 2004-0713                                                                Page 3                
              Application No. 09/900,256                                                                                


              of the rejection, and to the brief (Paper No. 11, filed May 12, 2003) and reply brief                     
              (Paper No. 13, filed October 2, 2003) for the appellants' arguments thereagainst.                         


                                                       OPINION                                                          
                     In reaching our decision in this appeal, we have given careful consideration to                    
              the appellants' specification and claims, to the applied patent to Sonoda, and to the                     
              respective positions articulated by the appellants and the examiner.  Upon evaluation of                  
              all the evidence before us, it is our conclusion that the evidence adduced by the                         
              examiner is insufficient to establish a prima facie case of obviousness with respect to                   
              the claims under appeal.  Accordingly, we will not sustain the examiner's rejection of                    
              claims 1 to 4 and 7 to 9 under 35 U.S.C. § 103.  Our reasoning for this determination                     
              follows.                                                                                                  


                     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).  Even when                                   








Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007