Appeal No. 2006-3246
Application No. 09/956,849
Additionally, we note that the thirteen groups of claims separately
argued by Appellants appear to each be directed to separate aspects of the
overall combination of claimed elements as different sub-combinations and
embodiments as disclosed in the summary of the invention in Appellants’
specification. While we find the independent claim 6192 is the generic base
claim, the Examiner should reconsider the variation in the subject matter in
the present prosecution for possible restriction. Rather than prosecute the
total 6632 claims originally filed in this application and pay the filing fee
thereto, Appellants elected to cancel a majority of the claims and prosecute
the broadest combination of elements. (See Preliminary Amendment filed
Mar. 4, 2002.) Here, we note that the divergent subject matter of the various
claims makes for problematic prosecution which we find to be compounded
by a specification which does not define terms used in the claims and the
specification provides a myriad of exemplary embodiments and
combinations. With this a background, we will address the groupings as
generally set forth by Appellants so as to clearly set forth our review of the
rejected claims.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of presenting a prima facie case of obviousness. See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie
case of obviousness is established by presenting evidence that the reference
teachings would appear to be sufficient for one of ordinary skill in the
relevant art having the references before him to make the proposed
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