Appeal 2006-3092
Application 10/601,738
adaptation, such as decreased size, increased reliability, simplified operation,
and reduced cost”).
With respect to the role of the Examiner as finder of fact, the Court of
Appeals for the Federal Circuit has stated: “the examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In rejecting claims under 35
U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
Examiner must make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore,
“‘there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness’ . . . . [H]owever, the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
127 S. Ct. at 1741, 82 USPQ2d at 1396 (2007) (quoting In re Kahn, 441
F.3d at 988, 78 USPQ2d at 1336 (Fed. Cir. 2006)). Further, as pointed out
by our reviewing court, we must first determine the scope of the claim.
“[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations as recited and disputed in independent claim 1.
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