Appeal No. 2005-0001
Application No. 09/268,902
circuit. (See the abstract of Huddleston). Thus, in addition to the reasons
provided by the examiner, we find that the nature of the problem to be solved by
Mitsuhashi and Huddleston provide the motivation to combine the references.
Accordingly, we find that the examiner has made a prima facie case of
obviousness.
Our reviewing court has said, “when the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.” In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (citing In re King 801 F2d
1324, 1327, 231 USPQ 136, 138) (Fed Cir. 1986). Appellant’s arguments on
pages 12 and 13, challenging the examiner’s rationale in support of the
motivation to combine the references do not present any facts upon which to
rebut the examiner’s prima facie case of obviousness. Accordingly, we sustain
the examiner’s rejection of the claims in group A, claims 1, 40 and 41.
Claim Group B (Claims 2-5, 42 and 44).
Appellant argues on page 14 of the brief that claims 2-5, 42 and 44
depend upon claim 1, and that Tuan does not “cure the deficiencies of
Mitsuhashi and Huddleston”. Further, on page 15 of the brief, appellant argues;
“the Office Action fails to provide particular findings as to the reasons a skilled
artisan, with no knowledge of the presently claimed invention, would have
selected the cited references for combination.” Specifically, appellant argues, on
pages 15 and 16:
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