Appeal No. 2005-2042 Page 11
Application No. 09/946,298
1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983)). Here, claim 12 recites in pertinent part
the following limitations: "the restorative force being reactive to an induced force acting
on the parallel lateral sections; and the induced force being induced by rotation of the
Halbach array around the stator."
2. Obviousness Determination
"In rejecting claims under 35 U.S.C. Section 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "'A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, in contrast to his rejection of claim 11, the examiner does not address the
aforementioned limitations of claim 12. We will not "resort to speculation," In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), as to whether the references
would have suggested the specific limitations. Therefore, we reverse the obviousness
rejection of claim 12.
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