Appeal 2006-2352
Application 10/065,436
applied prior art. Additionally, it has long been established that the initial
burden of establishing a prima facie basis to deny patentability to a claimed
invention rests upon the Examiner. Ex parte Levy, 17 USPQ2d 1461, 1463-
1464 (BPAI 1990).
Under 35 U.S.C. § 103(a), the Examiner carries the initial burden of
establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d
1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). As part of meeting
this initial burden, the Examiner must determine whether the differences
between the subject matter of the claims and the prior art “are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art” (emphasis added).
35 U.S.C. § 103(a)(1999); Graham v. John Deere Co., 383 U.S. 1, 14,
148 USPQ 459, 465 (1966). The applied prior art reference(s) as a whole
must be viewed from the perspective of one of ordinary skill in the art to
determine whether “some suggestion” is present to arrive at the claimed
subject matter. Cf. In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198
(CCPA 1972).
FINDINGS OF FACT/ANALYSIS
The Examiner has correctly found that Hirakawa discloses an
embodiment of fiber that has an “empty core” (Answer 5; Hirakawa, para.
bridging 656-57. 3
3 The Examiner’s reference to the Derwent abstract at page 5 of the Answer
is taken as a reference to the disclosure presented at the paragraph bridging
pages 656 and 657 of the English language Translation of Hirakawa’s
publication.
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