Ex Parte Cai - Page 5



         Appeal No. 2006-2707                                                       
         Application No. 09/749,792                                                 

         I. Under 35 U.S.C. § 103(a), is the Rejection of Claims 1                  
         through 4, 6 through 9 and 11 through 17 as being unpatentable             
         over the combination of Georgiou and McDermott 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 be found explicitly          
         in the prior art, as the teaching, motivation, or suggestion may           

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