Appeal No. 2007-0048 Page 5
Application No. 10/234,608
Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1367, 71
USPQ2d 1081, 1091 (Fed. Cir. 2004).
Since the Examiner does not elaborate as to why a “perforation”
necessarily flows from Martin’s general cutting process, we find that the
Examiner has not established that Martin inherently discloses the “perforation”
feature required by claim 11. Consequently, the Examiner has not shown that
Martin describes every element as set forth in claim 11 and, thus, has not met his
initial burden of establishing a prima facie case of anticipation.
Accordingly, the Examiner’s rejection of claims 11 and 12 under 35 U.S.C.
§ 102(b) over Martin is reversed.
However, we enter new grounds of rejection under 35 U.S.C. §103(a) of
claims 11 and 12 infra.
The Obviousness Rejection
Lowry and Gibson are applicable as prior art under 35 U.S.C. § 102(b).
In a 35 U.S.C. § 103 case, the burden of proof is on the PTO to establish
a prima facie case of obviousness, In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (1967). The test is as follows:
“A claimed invention is unpatentable if the differences
between it and the prior art “are such that the subject matter as a
whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art” 35 U.S.C. § 103 (1994).
The ultimate determination as to whether or not an invention is
obvious is a legal conclusion based on underlying factual inquiries
including: (1) the scope and content of the prior art; (2) the level of
ordinary skill in the art; (3) the differences between the claimed
invention and the prior art; and (4) objective evidence of
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