Ex Parte FOX et al - Page 4




              Appeal No. 2004-1156                                                                                        
              Application No. 09/071,594                                                                                  


                                                    OBVIOUSNESS                                                           
                     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 the reference teachings would appear to be                          
              sufficient for one of ordinary skill in the relevant art having the references before him to                
              make the proposed combination or other modification.  See In re Lintner, 458 F.2d                           
              1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  Furthermore, the conclusion that the                            
              claimed subject matter is prima facie obvious must be supported by evidence, as                             
              shown by  some objective teaching in the prior art or by knowledge generally available                      
              to one of ordinary skill in the art that would have led that individual 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).  Rejections based on     §                       
              103 must rest on a factual basis with these facts being interpreted without hindsight                       
              reconstruction of the invention from the prior art.  The examiner may not, because of                       
              doubt that the invention is patentable, resort to speculation, unfounded assumption or                      
              hindsight reconstruction to supply deficiencies in the factual basis for the rejection.  See                
              In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied,                             




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