Appeal No. 2005-0478 Page 4
Application No. 10/064,363
I. Whether the Rejection of Claims 1 and 5-6 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 1 and 5-6.
Accordingly, we affirm.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner can satisfy this burden by showing that some objective teaching in the
prior art or knowledge generally available to one of ordinary skill in the art
suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at
1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of
all the pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision
on appeal, the Board must necessarily weigh all of the evidence and argument.”
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of record, but
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