Appeal No. 2006-0859
Application No. 09/778,338
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 made, based on evidence of record, but must also explain the reasoning by
which the findings are deemed to support the agency’s conclusion.” In re Lee, 277 F.3d
1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 1, Appellants argue at page 5 of the brief, “the
[0.36-0.64mm] laminations in the Neumann reference are the laminations of the
magnetic material … and not [the armature laminations] around which the coil windings
are formed.” Appellants then dispute the Examiner’s view that “the art recognizes that
laminations [in this range] can be used for [either] permanent magnets or cores around
which coils are wound” because Appellants contend that “the art does not indicate that
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