Appeal No. 2005-0956 Page 7
Application No. 09/342,866
based solely on the selected representative claim. In re McDaniel, 293
F.3d 1379, 1383,
63 USPQ2d 1462, 1465 (Fed. Cir. 2002). See also In re Watts, 354 F.3d 1362,
1368, 69 USPQ2d 1453, 1457 (Fed. Cir. 2004).
I. Whether the Rejection of Claims 1-2, 12-15, 18-19, 26, 28, 30, 35-
36, and 41 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 not have suggested to
one of ordinary skill in the art the invention as set forth in claims 1-2, 12-15, 18-
19, 26, 28, 30, 35-36, and 41. Accordingly, we reverse.
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 Appellant.
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