Appeal No. 2006-1373
Application No. 09/814,054
103 as being unpatentable over the combination of Asano et al. (“Asano”) and Ohmura et
al. (“Ohmura”). We further do not agree with the Examiner that claims 53, 54 and 66 are
properly rejected under 35 USC 103 as being unpatentable over the combination of Asano,
Ohmura and Kubon. Accordingly, we reverse the Examiner’s rejections of claims 51-68
for the reasons set forth infra.
Appellant has indicated that for purposes of this appeal the claims stand or fall
together in three (3) groups. See page 5 of the Appeal Brief. However, the reasons set
forth infra are applicable to all the claims. Therefore, we will consider Appellant’s claims
as standing or falling together, and we will consider claim 51 as being representative of the
claimed invention.
I. Under 35 USC § 103, is the Rejection of Claims 51, 52, 55-65, 67 and 68 as
being Unpatentable Over the Combination of Asano and Ohmura Proper?
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
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