Appeal 2007-0002
Application 10/188,485
See id. at 1073, 5 USPQ2d at 1598. In so doing, the examiner is expected to make
the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art.1 In addition to these factual determinations, the examiner
must also provide “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir 2006) (cited with approval in
KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)).
Only if this initial burden is met does the burden of coming forward with
evidence or argument shift to the appellant. See Oetiker, 977 F.2d at 1445, 24
USPQ2d at 1444. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at
1472, 223 USPQ at 788. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at
788.
ANALYSIS
Claim 1 recites “initiating toasting two layers of baked bread by impinging
heated air surroundingly against said bread” (FF 1). Appellants are claiming more
1 Although Graham also suggests analysis of secondary considerations such as
commercial success, long felt but unsolved needs, failure of others, etc., Appellants
presented no such evidence of secondary considerations for the Board’s
consideration.
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