Appeal No. 2005-0971 Page 4
Application No. 10/114,392
We find nothing in Hays to indicate that the moderate compressive force is
measured as a prerequisite to stopping deforming. Rather, we find that Hays
merely states the well known fact that if two surfaces are joined together (without
breaking) there is a moderate compressive force there between.
Therefore, we will not sustain the Examiner’s rejection under
35 U.S.C. § 102.
II. Whether the Rejection of Claims 29-30, 33-38, 40-41, 46-47, 49-50,
52-57, 60-65, and 67-68 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 29-30, 33-38,
40-41, 46-47, 49-50, 52-57, 60-65, and 67-68. 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 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
must also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434
(Fed. Cir. 2002).
With respect to claims 29-30, 33-38, 40-41, 46-47, 49-50, 52-57, 60-65,
and 67-68, all of these claims include the “deforming condition” found in claim 66.
Our review of these rejections and the answer finds that the Examiner’s
rejections of these claims fail to correct the deficiency discussed above with
respect to claim 66.
Therefore, the Examiner has not met the initial burden of establishing a
prima facie case of obviousness, and we will not sustain the Examiner’s
rejection under 35 U.S.C. § 103.
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