Appeal 2006-2612
Application 10/225,316
and 9) and that air contained within the core cells of Landi is a pressurized
fluid until a pressure change in the fluid triggers the equalizer. That
explanation of Landi falls short in establishing a prima facie case of
anticipation. This is so because the Examiner has not fairly explained how
the open perforations of Landi qualify as a normally closed valve as required
by claims 7 and 9. Also, the Examiner has not satisfactorily explained how
air that is located in the perforated cells of Landi comprises a pressurized
column of fluid for supporting an object, as required by claim 8.
Accordingly, we reverse the Examiner’s anticipation rejection of claims 7-9.
Concerning the Examiner’s § 103(a) rejection of claims 5, 6 and 10-
16, the Examiner takes the position that it would have been obvious to one
of ordinary skill in the art at the time of the invention to have employed
tetrahedron-shaped cells in place of the hexagonal shaped cells of the
honeycomb structure of Landi. This is because a mere change in shape is
generally recognized as being obvious according to the Examiner.
The Examiner has the initial burden of establishing a prima facie case
of obviousness. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976). Here, the Examiner does not explain how the applied
prior art itself would have fairly suggested Appellant’s claimed invention to
one of ordinary skill in the art. See In Rinehart, 531 F.2d at 1051, 189
USPQ at 147. Instead, the Examiner merely relies upon a per se rule that a
change in shape is within the skill of the art.
As stated by the Federal Circuit in In re Ochiai, 71 F.3d 1565, 1572,
37 USPQ2d 1127, 1133 (Fed. Cir. 1995), “reliance on per se rules of
obviousness is legally incorrect and must cease.” Moreover, Landi (col. 3,
7
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