Appeal 2006-1531
Application 10/645,226
Claims 1-6 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis in view of Ostrowsky and Farris.
OPINION
Upon review of the opposing arguments and evidence advanced by
the Examiner in the Answer and Appellant in the Briefs in support of their
respective positions, we conclude that the Examiner has not established a
prima facie case of obviousness for the claimed subject matter.
Accordingly, we will not sustain the Examiner's § 103 rejection for reasons
set forth in Appellant's Briefs and as further discussed below.
Under 35 U.S.C. § 103(a), the Examiner carries the initial burden of
establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d
1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). As part of meeting
this initial burden, the Examiner must determine whether the differences
between the subject matter of the claims and the prior art “are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art” (emphasis added).
35 U.S.C. § 103(a) (1999); Graham v. John Deere Co., 383 U.S. 1, 14,
148 USPQ 459, 465 (1966). The applied prior art references as a whole
must be viewed from the perspective of one of ordinary skill in the art to
determine whether “some suggestion” is present to arrive at the claimed
subject matter. Cf. In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198
(CCPA 1972).
Claim 1, the sole independent claim before us on appeal, requires a
fluid-tight vial including a substantially cylindrical container and a cap.
Claim 1 requires a cylindrical container including an open end with an
integral flange and lip, which features are circumferentially arranged about
3
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