Appeal No. 2004-1543 Page 3
Application No. 09/303,991
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art, and to the respective
positions articulated by the appellants 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 7 to 13
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. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Rejections based on
35 U.S.C. § 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
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007