Appeal No. 2005-1895
Application 08/861,989
or falling together, and we will treat claim 25 as a representative claim of all the claims on
appeal.
Whether the Rejection of Claims 25-30 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 25-30. Accordingly, we reverse.
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 evidence or argument shift to the Appellants. Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of all the
pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal, the
Board must necessarily weigh all of the evidence and argument.” Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444. “[T]he Board must not only assure that the requisite findings are
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