Appeal No. 2004-1412
Application 09/818,686
claims 6, 7, 13 and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Christopher in view of Kamioka as applied to claims 1 and 15, and further in view of Miyagi
(page 3); and
claims 16 through 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable Christopher in
view of Kamioka (pages 3-4).
Appellants state that “”[i]n as far as presented herein, claims 1, 6, 7, 10-13 stand or fall
together, and claims 15-22 stand or fall together” (brief, page 6). Thus, we decide this appeal
based on appealed claims 1, 6, 15 and 16 as representative of the respective grounds of rejection
and the grouping of claims as it pertains to a ground of rejection. 37 CFR § 1.192(c)(7) (2003).4
We reverse each of the three grounds of rejection set forth in the final action mailed
January 15, 2003, and accordingly, the decision of the examiner. Under the provisions of 37
CFR § 1.196(b) (2003), we enter a new ground of rejection of appealed claims 1, 6, 7, 10
through 13 and 15 through 22 under 35 U.S.C. § 103 as being unpatentable over the combined
teachings of Christopher and Miyagi. See generally, In re Eynde, 480 F.2d 1364, 1370-71,
178 USPQ 470, 474-75 (CCPA 1973); Manual of Patent Examining Procedure § 1213.02
(8th ed., Rev. 2, May 2004; 1200-32).
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the examiner’s answer and to appellant’s brief and reply brief for a complete exposition
thereof.
Opinion
Considering first the grounds of rejection set forth in the final action, it is well settled that
in order to establish a prima facie case of obviousness under § 103(a), the examiner must show
that some objective teaching, suggestion or motivation in the applied prior art taken as a whole
and/or knowledge generally available to one of ordinary skill in this art would have led that
4 We point out here that under the rules pertaining to appellant’s brief, an appellant can group
the claims with respect to each ground of rejection contested as specified, and if appellant does
not do so, the Board will select the claim or claims on which it will decide that ground of
rejection. See 37 CFR § 1.192(c)(6) ("concise statement of the issues presented for review"),
§ 1.192(c)(7) ("[f]or each ground of rejection that appellant contests . . . the Board shell select a
single claim . . . unless" a grouping of claims is presented by appellant pursuant to this
paragraph), and § 1.192(c)(8) ("[t]he contentions of appellant with respect to each of the issues
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