Appeal 2007-0611
Application 09/800,986
PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case of
obviousness in rejecting claims under 35 U.S.C. § 103. See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
In rejecting claims under 35 U.S.C. § 103, 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 must 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. “[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). Furthermore, “‘there must be
some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of ordinary skill
in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006)). Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Oetiker,
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