Appeal No. 2004-0999
Application No. 09/997,086
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
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 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 pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." In re
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
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