Appeal 2006-1601
Application 09/828,579
B. Whether Appellant has established that the Examiner erred in
rejecting dependent claims 2-5, 7-8, 10, 12-13, 15, 17-18, and 20
under 35 U.S.C. § 103?
(1)
Introduction
Claims 2-5 depend from claim 1; claims 7-8 and 10 depend from claim 6;
claims 12-13 and 15 depend from claim 11; and claims 17-18 and 20 depend from
claim 16.
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.
An obviousness analysis commences with a review and consideration of all
the pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision on
appeal, the Board must necessarily weigh all of the evidence and argument.”
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board 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 agency’s
conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002).
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