Appeal No. 2005-2633 Page 5
Application No. 10/254,376
structures required by the claimed invention. (See discussion of §103 rejection Answer,
p. 4). As such, the Barber reference does not discloses the same invention as
described by the present claims within the meaning of 35 U.S.C. § 102. Accordingly, we
determine that the Examiner has not established a prima facie case of anticipation with
respect to the subject matter of claims 17 and 25.
The '103 rejections
In making a determination that an invention is obvious, the Examiner has the
initial burden of establishing a prima facie case. In re Rijckaert, 9 F.3d 1531, 1532, 28
U.S. P.Q.2d 1955, 1956 (Fed. Cir. 1993). To establish a prima facie case of
obviousness, several basic criteria must be met. There must be some suggestion or
motivation, either in the reference or references themselves or in the knowledge
generally available to one of ordinary skill in the art, to modify the reference or to
combine reference teachings. In re Fine, 837 F.2d 1071, 5 U.S.P.Q.2d 1596 (Fed. Cir.
1988). In addition, all of the claim limitations must be taught or suggested by the prior
art. In re Royka, 490 F.2d 981, 180 U.S.P.Q., 580 (CCPA 1974).
Claims 17, 18, 21, 22 stand rejected under 35 U.S.C. '103(a) as obvious over
Barber in view of Daniel.1 We reverse.
1 We will limit our discussion to claim 17. Claims 18, 21 and 22 depend on claim 17.
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