Appeal No. 2005-1843 Page 9
Application No. 09/585,222
such, claim 6 is not anticipated by Matousek.
As to the method of claim 6 being obvious from Matousek's ball valve, we note
that the examiner has not established a prima facie case of obviousness.2 A prima facie
case of obviousness is established by presenting evidence that would have led one of
ordinary skill in the art 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). In this case, the examiner has presented no
evidence that would have led one of ordinary skill in the art to have modified Matousek
so as to arrive at the method of claim 6.
For the reasons set forth above, the decision of the examiner to reject claim 6
under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C.
§ 103 as obvious over Matousek is reversed.
1(...continued)
function, it seems to be well settled that the disclosure should be regarded
as sufficient.
2In 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).
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