Appeal No. 2005-0208 Page 6
Application No. 10/137,510
The obviousness rejection
We will not sustain the rejection of claim s 11, 12, 15, 16 and 19 under 35 U.S.C.
§ 103.
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 would have led one of ordinary skill in the art to
combine the relevant teachings of the applied prior art to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). 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. Rejections based on
35 U.S.C. § 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
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007