Appeal No. 2004-2176
Application No. 09/996,624
and 5 is affirmed.
II. The 35 U.S.C. §103 rejection of claims 1, 2, 4, 5, 19 and 20
Because appellants have stated that claims 1-5 and 18-20 stand
or fall together (see page 5 of the brief), for the same reasons
that we affirmed the 35 U.S.C. §102(b) rejection of claims 1, 4 and
5, we also affirm the 35 U.S.C. §103 rejection of claims 1, 2, 4,
5, 19 and 20. We refer to our discussion set forth above.
III. The 35 U.S.C. § 103 rejection of claims 3 and 18
We consider claim 3 in this rejection.
Claim 3 recites “the packaging machine of claim 1 wherein said
heater driving means includes another air cylinder.”
On page 4 of the answer, the examiner refers to column 8, lines
34-36, of Fukuda, and based upon the disclosure “different
combinations of motion-communicating and torque-communicating means
can be substituted,” the examiner concludes it would have been obvious
to have substituted an additional air cylinder in place of the screw
axis 59 of Fukuda. On page 6 of the answer, the examiner states
that air cylinders are well-known actuators for controlling movement
and that an air cylinder is considered an obvious substitute for
a screw axis operated by a servo motor. However, the examiner does
not support this statement by evidence. Meanwhile, appellants
dispute the examiner’s contention that an air cylinder is an obvious
substitute of a screw axis operated by servo motors. Brief, pages
8-9.
The initial burden of presenting a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner does
not address appellants’ discussion in the last paragraph of page
8 and the first paragraph on page 9 of the brief. Also, as stated
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