Appeal No. 2005-1451 Page 3
Application No. 09/833,546
Claims 1 and 3-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Parker in view of Fuller and further in view of Sakakibara and the Handbook of Thermoset
Plastics.
For substantially the reasons articulated by Appellants in their Brief and Reply Brief, we
reverse. Because it is not clear that all the evidence relevant to patentability has been considered
by the Examiner, we remand the application to the Examiner for further search and
consideration. Our reasons follow.
OPINION
The examiner bears the initial burden of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). To satisfy this
burden, the examiner must establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). We
conclude that, in the present case, the Examiner has not provided the necessary factual basis to
support the conclusion that it would have been obvious to one of ordinary skill in the art to
modify the endless seamed flexible belt of Parker as proposed.
The Examiner relies upon Parker for the generic teaching of using a polyamide adhesive
in a puzzle cut seam. Because Parker does not further specify that useful polyamides include
alcohol-soluble polyamides, the Examiner relies upon the disclosure of alcohol-soluble
polyamides in Fuller. As pointed out by the Examiner, Fuller describes the use of alcohol-
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