Appeal No. 2004-1168
Application 09/884,518
Rejection under 35 U.S.C. §103
We now turn to the rejection under 35 U.S.C. § 103. 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 Appellant. 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 the pertinent
evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board
must necessarily weigh all of the evidence and argument.” 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 the
findings are deemed to support the agency’s conclusion.” In re Lee, 277 F.3d 1338,
1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
Returning to this case, Appellant argues that Hibbard teaches a strap receiving a
cylindrical base in which drill bits are stored but does not teach a subsurface object
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