Appeal 2006-3144
Application 09/778,281
ISSUE
Under 35 U.S.C § 103(a), has the Examiner established a prima facie
case of obviousness based on Tatham taken in combination with Maurille
with respect to claims 1, 2, 6-10, and 12 with the further addition of Sluiman
with respect to claims 3-5 and 11?
PRINCIPLES OF LAW
As a general proposition in an appeal involving a rejection under
35 U.S.C. § 103, an Examiner is under a burden to make out a prima facie
case of obviousness. If that burden is met, the burden of going forward then
shifts to Appellant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); and In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). ).
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 Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006)).
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013