Appeal Number 2006-2869
Application No. 10/385,520
Only those arguments actually made by appellants have been considered in this decision.
Arguments which appellants could have made but chose not to make in the brief have not been
considered. See 37 C.F.R. § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).
OPINION
In reaching our decision in this appeal, we have carefully considered the subject matter
on appeal, the rejection advanced by the examiner, and the evidence of obviousness relied upon
by the examiner as support for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, appellants' arguments set forth in the briefs along with
the examiner's rationale in support of the rejection and arguments in rebuttal set forth in the
examiner's answer. Upon consideration of the record before us, we make the determinations
which follow.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish
a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed.Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459,
467 (1966), and to provide a reason why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed.Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
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