Appeal 2006-2959
Application 10/066,277
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. Id., 977 F.2d at 1445, 24 USPQ2d at 1444. See also
Id., 745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner 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 Examiner’s conclusion.
3. OBVIOUSNESS
Motivation
On appeal, Appellants bears the burden of showing that the Examiner has
not established a legally sufficient basis for combining the teachings of the
references that the Examiner relied upon. Appellants may sustain this
burden by showing that the Examiner failed to provide sufficient evidence to
support that one having ordinary skill in the art would have combined
disclosures of the references, as proposed by the Examiner, to yield
Appellant’s invention. United States v. Adams, 383 U.S. 39 (1966); In re
Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006);
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, Co., 464
F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). The mere
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