Ex Parte Fukuda et al - Page 3




              Appeal No. 2005-2035                                                                    Page 3                 
              Application No. 10/281,417                                                                                     



                                                         OPINION                                                             
                      In reaching our decision in this appeal, we have given careful consideration to                        
              the appellants' specification and claims, to the applied prior art references, and to the                      
              respective positions articulated by the appellants and the examiner.  Upon evaluation of                       
              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 1 to 7 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).                                                   



                      1As such there is no need for us to weigh the Masayoshi Omura declaration (filed                       
              April 26, 2004).                                                                                               









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