Appeal 2007-0571
Application 10/277,004
PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). It is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). 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. 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. Co. 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,
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