Appeal No. 2005-0564
Application No. 09/732,787
smoother grip of the outer covering 16 in Gerrans may be
incorporated in the admitted prior art since the disclosure does
not disclose where and/or how it would be gripped (brief, page
5). Appellant further points out that even if the electrical
connector of Gerrans would be held, one would hold it at
foundation portion 9 nearest to the interface, and not at outer
covering 16 (reply brief, page 4).
In response, the Examiner argues that covering 16 of Gerrans
provides a smoother grip by avoiding sharp or pointy edges that
may be uncomfortable to a user’s hand (answer, pages 5 & 6).
Furthermore, the Examiner asserts that absent a specific
holding/handling portion, the housing itself functions as the
holding portion (answer, page 6).
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.
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