Appeal No. 2005-0341 Page 3
Application No. 09/977,409
examiner's complete reasoning in support of the rejections, and to the brief (filed April
28, 2004) for the appellants' arguments thereagainst.
OPINION
Initially we note that the issue of whether the amendment to Figure 3 adds new
subject matter relates to a petitionable matter and not to an appealable matter. See
Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201. Accordingly, we will
not review the issue raised by the appellants on pages 4 and 8-10 of the brief.
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 to 10 under 35 U.S.C. § 103. Our reasoning for this determination follows.
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
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007