Appeal No. 2006-0145
Application 09/639,850
Additionally, the examiner relies on appellants’ admitted prior art (APA) regarding the
swelling ratio of silicone rubber, at page 8, lines 4-10, and Table 3 of the instant application.
Claims 2-8 stand rejected under 35 U.S.C. §103. As evidence of obviousness, the examiner
offers Black and Mastromatteo with regard to claims 2, 3, and 8, alternatively adding to this
combination, Klein with regard to claim 4, Kawahata with regard to claims 5 and 7, and Miller and
APA with regard to claim 6.
Reference is made to the briefs and answer for the respective positions of appellants and the
examiner.
OPINION
In rejecting claims under 35 U.S.C. §103, the examiner bears the initial burden of presenting a
prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). To reach a conclusion of obviousness under §103, the examiner must produce a
factual basis supported by a teaching in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this evidence in order to establish a
prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
The examiner may satisfy his/her burden only by showing some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would lead the individual to
combine the relevant teachings of the references. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
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