Appeal No. 2007-0290
Application No. 09/778,464
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Prima facie
obviousness requires that each element of the claimed invention be
identified in the prior art and that “some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would
lead the individual to combine the relevant teachings of the references.” In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). See
In re Huston, 308 F.3d 1267, _, 64 USPQ2d 1801, 1810 (Fed. Cir. 2002).
When a prima facie case is made, the burden shifts to the patent applicant to
come forward with evidence and/or argument supporting patentability.
Oetiker at 977 F.2d 1445, 24 USPQ2d 1444.
Here, the Examiner rejects the claims as obvious based on the
Taniguchi patent, explaining where each element of the claimed ophthalmic
lens can be found in the patent and why, in view of Taniguchi’s disclosure,
the claimed subject matter would have been obvious to a person of ordinary
skill in the art. Answer 3-4. Because we find no fault with this evidence, we
conclude that the Examiner has established a prima facie case of
obviousness, shifting the burden to Appellants to present additional evidence
or arguments to support their position. Oetiker at 977 F.2d 1445, 24
USPQ2d 1444.
To rebut the Examiner’s case, Appellants introduce the Roisin
Declaration which they assert establishes that Taniguchi’s second film layer
would not be considered an anti-reflective coating by the skilled worker. Br.
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