Appeal No. 2006-2480
Application No. 10/384,862
Although we conclude that Bevan actually anticipates claims 1 and 10,
obviousness rejections can nevertheless be based on references that happen to
anticipate the claimed subject matter. In re Meyer, 599 F.2d 1026, 1031, 202
USPQ 175, 179 (CCPA 1979). The examiner’s rejection of independent claims 1
and 10 is therefore sustained.
Since appellant has not separately argued the patentability of dependent
claims 3, 4, and 6-9, these claims fall with independent claims 1 and 10. See In
re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987). See
also 37 CFR § 41.37(c)(vii).
We next consider the examiner’s rejection of claim 5 under 35 U.S.C.
§ 103(a) as being unpatentable over Bevan in view of Gutta. We will sustain the
examiner's rejection. We find that the examiner has established at least a prima
facie case of obviousness that appellant has not persuasively rebutted.
Specifically, the examiner has (1) pointed out the teachings of Bevan, (2) pointed
out the perceived differences between Bevan and the claimed invention, and (3)
reasonably indicated how and why Bevan would have been modified by the
teachings of Gutta to arrive at the claimed invention [final rejection, pages 5 and
6]. Once the examiner has satisfied the burden of presenting a prima facie case
of obviousness, the burden then shifts to appellant to present evidence or
arguments that persuasively rebut the examiner's prima facie case. Appellant did
not persuasively rebut the examiner's prima facie case of obviousness, but
merely noted that the addition of Gutta fails to cure the deficiencies of Bevan in
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