Appeal No. 2006-2074
Application No. 10/158,197
persuaded by the appellants’ arguments that the examiner’s rejection of
independent claims 36 and 50 is in error and we find that the examiner has
established a prima face case of obviousness.
Dependent claims 37 through 49 and 51 through 63 ultimately depend
upon either claim 36 of 50 and are rejected 35 U.S.C. § 103 (a) as being
unpatentable over Sanelli and Howell in conjunction with other references.
For the reasons stated infra, we find that the evidence of secondary
considerations outweighs the examiner’s prima face case of obviousness
over Sanelli and Howell. Accordingly, we will not further address the
rejections, of claims 37 through 49 and 51 through 63, as our finding that the
evidence of secondary considerations outweighing the evidence presented in
Sanelli and Howell also applies to the rejections applied to claims 37
through 49 and 51 through 63.
In rejecting claims under 35 U.S.C. § 103 (a), 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. Appellants have
presented evidence of secondary considerations to show non-obviousness.
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