Appeal No. 2006-2895 Page 4
Application No. 09/971,469
August 30, 2004), and supplemental reply brief (filed May 25, 2006) for the
appellants’ arguments.
OPINION
In reaching our decision in this appeal, we have carefully considered the
appellants’ specification and claims, the applied prior art, and the respective
positions articulated by the appellants and the examiner. As a consequence of our
review, we make the determinations that follow. It is our view that, after
consideration of the record before us, the examiner has failed to make a prima facie
case of obviousness.
In rejecting claims under 35 U.S.C. § 103(a), 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 that
knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references such that they would
teach or suggest the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See id. at
1073, 5 USPQ2d at 1598. 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). The examiner must articulate reasons for the examiner's
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
In particular, the examiner must show that there is a teaching, motivation, or
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