Appeal No. 2004-1572
Application No. 09/370,104
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 the Appellants. 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).
With respect to independent claim 1, Appellants argue at page 8 of the brief, “Watanabe
fails to teach or suggest parameters such as clump-percent, clump-rate, break-rate, break-
percent, or break-vector.” We agree. Appellants’ original specification specifically defines
these terms at page 15, lines 10-14; page 17, lines 8-20; and page 21, line 12, to page 22, line 18.
Notwithstanding the Examiner’s position, we have reviewed the Watanabe reference and
fail to find anything in the reference that teaches or suggests these parameters.
Therefore, we will not sustain the Examiner’s rejection under 35 U.S.C. § 103.
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