Appeal No. 2007-0429
Application 09/848,430
THE ISSUE
Have Appellants demonstrated that the Examiner failed to establish the
obviousness of the subject matter recited in claims 1 and 2?5
PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability.” In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A rejection under
35 U.S.C. § 103(a) must be based on the factual determinations required by the,
namely, (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 indicia of non-obviousness. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641,
1645 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966)). In addition, “there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of obviousness.”
KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)
(quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
rejection (id. at 7-9) .
5 As explained in In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453,
1455 (Fed. Cir. 1998): “On appeal to the Board, an applicant can overcome a
rejection [for obviousness] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”
5
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