Appeal No. 2005-0062
Application 09/222,906
With respect to dependent claim 6, Appellant argues at page
4 of the reply brief that the Examiner has failed to establish
that the elements of claims 6-7 and 13-14 are obvious over
Yokomizo. We agree.
The Examiner’s rejection at pages 5-6 of the Final rejection
(Paper No. 16) states that Yokomizo fails to teach the features
of claim 6. The rejection goes on to state that it would be
obvious to modify Yokomizo to include these features, as these
features are well known. We find that Appellant has not
challenged the Examiner’s taking of official notice as to these
features. However, we also find that the Examiner has used
improper hindsight to combine the well-known features with the
system of Yokomizo. Mere existence in the prior art is not
sufficient motivation to combine. The Examiner has not met the
initial burden of establishing a prima facie case of obviousness.
Therefore, we will not sustain the Examiner’s rejection
under 35 U.S.C. § 103.
III. Whether the Rejection of Claims 15-17 Under
35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the invention as set forth in claims 15-17. Accordingly,
we affirm.
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