Appeal No. 2006-1064 Page 3
Application No. 10/170,684
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
the Appellants regarding the above-noted rejections, we make reference to the Answer
(mailed September 21, 2005) for the Examiner's reasoning in support of the rejections,
and to the Brief (filed June 28, 2005) for the Appellants= arguments there against. We
reverse the ' 103 rejections. Our reasons follow.
OPINION
In making a determination that an invention is obvious, the Examiner has the
initial burden of establishing a prima facie case of obviousness. 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).
In the present case, the Examiner has failed to establish a prima facie case of
obviousness to support the rejections for two reasons. First, the cited reference fails to
teach or suggest every element of the claimed invention. Second, there is no teaching
or suggestion within the cited reference or within the general knowledge of those skilled
in the art that would have led one skilled to the claimed invention.
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