Appeal No. 2005-1882
Application No. 09/989,244
reverse the Examiner’s rejection of claims 1-5, 7, and 8 under 35 U.S.C. § 103.
Only those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants could have made but chose not to make in the brief have
not been considered. We deem such arguments to be waived by Appellants [see
37 CFR § 41.37(c)(1)(vii) effective September 13, 2004 replacing 37 CFR § 1.192(a)].
I. Whether the Rejection of Claims 1-5, 7, and 8 Under 35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in the
art the invention as set forth in claims 1-5, 7, and 8. Accordingly, we reverse.
For purposes of our decision, we treat claim 1 as representative of all the claims on
appeal. We note that Appellants’ arguments with respect to claim 1 are incorporated by
reference in the arguments made with respect to claims 5 and 8 (Brief at pages 9 and 11).
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing that some objective
teaching in the prior art or knowledge generally available to one of ordinary skill in the art
suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). Only if this initial burden is met does the burden of coming forward with
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