Appeal No. 2006-2344
Application No. 10/408,890
1, 2, 7 through 12 and 20 are properly rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of APA, Akimoto and Subramanian. We also agree with the Examiner that
claims 3 through 6 and 13 through 19 are properly rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of APA, Akimoto, Subramanian and Pedersen.
Accordingly, we affirm the Examiner’s rejections of claims 1 through 20 for the reasons
provided in the Examiner’s Answer as further expanded upon in this opinion, and for the reasons
set forth infra.
I. Under 35 U.S.C. § 103, is the Rejection of Claims 1, 2, 7 through 12 and 20 as
being unpatentable over the combination of APA, Akimoto and Subramanian 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. Thus, the examiner 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 examiner’s conclusion. However, a
suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to
2004, has not been considered.
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