Appeal No. 2007-0093 Page 5
Application No. 10/924,119
suitable filtering apparatus for separating a double metal cyanide catalyst
from slurry.
Answer, page 4.
Citing In re Roufett, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1458-59 (Fed. Cir.
1998), Appellants assert that the Examiner used “impermissible hindsight reconstruction
using the Appellants’ specification as a blueprint to supply the missing motivation or
suggestion to combine references in the manner indicated.” Brief, page 5. However,
they do not specifically challenge any of the Examiner’s findings regarding the cited
prior art. Appellants also “aver that absent the teaching of their specification, such
suggestion or motivation does not exist.” Id., page 5.
The Examiner bears the initial burden of showing unpatentability. See, e.g., In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). To establish a
prima facie case of obviousness, there must be some suggestion or motivation, either in
the references themselves or in the knowledge generally available to one of ordinary
skill in the art, to modify the reference or to combine reference teachings. In re Vaeck,
947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991); In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999). “The prima facie case is a procedural tool of
patent examination, allocating the burdens of going forward as between examiner and
applicant. In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir.
1990). . . . As discussed in In re Piasecki [745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984)], the examiner bears the initial burden . . . of presenting a prima facie
case of unpatentability. If that burden is met, the burden of coming forward with
evidence or argument shifts to the applicant.” In re Oetiker, 977 F2d 1443, 1445,
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