Appeal No. 2005-1244 Page 3
Application No. 10/134,902
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal.1 Accordingly, we will not sustain the examiner's rejection of
claims 21 to 29 under 35 U.S.C. § 103. Our reasoning for this determination follows.
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). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C.
§ 103 is casting the mind back to the time of invention, to consider the thinking of one of
ordinary skill in the art, guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). Close adherence to this methodology is especially important in cases
1Thus, there is no need for us to weigh the 37 CFR § 1.132 declaration of Ken
Wickman.
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