Appeal No. 2005-0129
Application No. 09/406,353
to make in the brief have not been considered and are deemed to be waived. (See 37
CFR § 41.37 (c) (1) (vii) (2004)).
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 the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual 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).
Rejections based on § 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 rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Our reviewing court has
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007