Ex Parte Harada - Page 3




              Appeal No. 2004-1223                                                                  Page 3                
              Application No. 09/842,142                                                                                  


                     Rather than reiterate the conflicting viewpoints advanced by the examiner and                        
              the appellant regarding the above-noted rejection, we make reference to the answer                          
              (Paper No. 16, mailed September 26, 2003) for the examiner's complete reasoning in                          
              support of the rejection, and to the brief (Paper No. 14, filed July 28, 2003) and reply                    
              brief (Paper No. 17, filed October 28, 2003) for the appellant's arguments thereagainst.                    


                                                       OPINION                                                            
                     In reaching our decision in this appeal, we have given careful consideration to                      
              the appellant's specification and claims, to the applied prior art references, and to the                   
              respective positions articulated by the appellant and the examiner.  Upon evaluation of                     
              all the evidence before us, it is our conclusion that the evidence adduced by the                           
              examiner is insufficient to establish a prima facie case of obviousness with respect to                     
              the claims under appeal.  Accordingly, we will not sustain the examiner's rejection of                      
              claims 1 and 2 under 35 U.S.C. § 103.  Our reasoning for this determination follows.                        


                     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 would have led one of ordinary skill in the art to                  
              combine the relevant teachings of the references to arrive at the claimed invention.                        








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