Appeal No. 2006-3218
Application No. 10/233,845
Claims 16-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
AAPA and Miyashiro. Claims 21-35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA in view of Miyashiro and Saito. Claims 16, 21, and 27 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA and Yasumasa.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
Appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by Appellants and the Examiner. As a consequence of
our review, we make the determinations that follow.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is established
by presenting evidence that the reference teachings would appear to be sufficient for one
of ordinary skill in the relevant art having the references before him to make the proposed
combination or other modification. See In re Lintner, 458 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by some objective teaching
in the prior art or by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the references to
arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). Rejections based on § 103 must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the invention from the prior
art. The Examiner may not, because of doubt that the invention is patentable, resort to
speculation, unfounded assumption or hindsight reconstruction to supply deficiencies in
the factual basis for the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
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