Ex Parte Suomela et al - Page 5



          Appeal No. 2005-2505                                                        
          Application 09/740,277                                                      

            I.   Whether the Rejection of Claims 1-17, 27-32, 40-41, and              
                 47-49 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 have suggested to one of ordinary skill in             
          the art the invention as set forth in claims 1-17, 27-32, and               
          40-41.  Accordingly, we affirm.                                             
               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               




Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007