Appeal No. 2005-1040 Page 3
Application No. 09/777,420
Each of appellants’ independent claims 1, 14, 21 and 25 recites a reel housing
comprising either an access panel (claims 1 and 14) or a detachable facial indicia
element (claims 21 and 25) having an exterior surface having facial indicia to resemble
“one of an animal, a human, a human-like character, and an alien creature” (claims 1,
21 and 25) or facial indicia including one or more of “(i) a pair of eyes, (ii) a nose or
beak, and (iii) a mouth” (claim 14).
The examiner concedes on page 4 of the answer that Hall’s traffic counter
housing (casing 1) lacks facial indicia as claimed.1 In order to account for the facial
indicia feature the examiner’s position is:
That the exterior surface of the access panel has a facial
indicia to resemble one of an animal, human-like character,
or alien creature (as recited in claims 1, 4-7, 9-19, 21, and
25) would have been an obvious matter of ornamental
design choice to a person having ordinary skill in the art
based on ornamental preference, providing no new or
unexpected results. In other words, the ornamental design
of the exterior surface of the access panel would have been
an obvious matter of ornamental design choice to a person
having ordinary skill in the art based on ornamental
preference, providing no new or unexpected results [answer,
page 3].
On page 4 of the answer, the examiner adds that:
1 The examiner’s statement on page 4 of the answer that “the facial indicia inherent in the device
of Hall could very well resemble that of an alien creature, since the examiner has never seen an alien
creature” is quite manifestly not supported by any evidence that Hall’s casing has facial indicia resembling
that of an alien creature. It is well settled that the language "[a] person shall be entitled to a patent unless"
in 35 U.S.C. § 102 places a burden of proof on the examiner to produce the factual basis for its rejection of
an application under sections 102 and 103. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). It follows that, when relying on the theory of inherency,
the examiner has the initial burden of providing a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent characteristic reasonably flows from the teachings of
the applied prior art. See In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986).
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