Appeal No. 2005-0473
Application No. 09/514,946
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As a general proposition, 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) and In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). A
prima facie case of obviousness is established when the teachings
of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See
In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051,
5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985). In considering the question of the obviousness
of the claimed invention in view of the prior art relied upon,
the Examiner is expected to make the factual determination set
forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459,
467 (1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior art
or to combine prior art references to arrive at the claimed
invention. See also In re Rouffet, 149 F.3d 1350, 1355, 47
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