Appeal No. 2004-0949
Application No. 09/528,986
examiner explains how inclusion of a shielding member would have
been obvious. That is, the examiner does not remedy the
deficiency he finds in Matsushita.
We note that in presenting a proper prima facie case of
obviousness, the examiner must make a comparison between the
scope of the claim (with respect to every claimed element) and
the teachings of the applied art to determine whether a prima
facie case of obviousness exists based upon such a comparison.
Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). In
the instant case, the examiner’s rejection does not provide us
with such a comparison. The examiner does not address each
element of claim 1 and discuss whether or not a particular
element is taught, or not taught, by Matsushita, and, then, why
any element not taught, would have been obvious. For example,
if component 9 is the thin film, the examiner has not explained
whether or not Matsushita teaches the claimed closure cap also.
Nor has the examiner explained why it would have been obvious to
modify the battery of Matsushita to include a closure cap.
Because of these failings found in the examiner’s rejection, we
reverse the obviousness rejection.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007