Appeal No. 2004-0893
Application No. 09/124,310 Page 12
examiner’s § 103(a) rejection of claim 20 over Itoh on this
record.
Rejection of claims 8, 19, 20 and 28 under 35 U.S.C. § 103(a)
Concerning the examiner’s § 103(a) rejection of dependent
claims 8, 19, 20 and 28 over DeVolpi, the examiner again takes
Official Notice concerning electrical component location as
discussed above and asserts the obviousness of such an electrical
component location in DeVolpi. However, the examiner has not
particularly explained how the examiner’s proposed modification
of the joy stick of DeVolpi would result in the claimed
structure. Absent such a specific factual analysis, the
rejection fails to present a prima facie case of obviousness.
This is so because under 35 U.S.C. § 103(a), “the examiner bears
the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In other words, the examiner must provide a sufficient
factual basis to support his Section 103(a) rejection. This the
examiner has not done. It follows that we reverse the examiner’s
§ 103(a) rejection over DeVolpi on this record.
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