Appeal No. 2006-1617
Application No. 09/812,202
II. Whether the Rejection of Claims 1-4 Under 35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the invention as set forth in claims 1-4. Accordingly, we reverse.
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 pages 11-13 of the
brief, that the Examiner has erred in that he has not established Anderson teaches or
4
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