Appeal 2007-0768 Page 10
Application 10/430,883
1 25. Appellants do not dispute that, if the Examiner’s characterization of
2 claim 14 is correct, the prior art discloses the features of claim 14.
3
4 PRINCIPLES OF LAW
5
6 1. A prima facie case of obviousness is established by presenting
7 evidence that would have led one of ordinary skill in the art to combine the
8 relevant teachings of the references to arrive at the claimed invention. See In
9 re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In
10 re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
11 2. “The prima facie case is a procedural tool of patent examination,
12 allocating the burdens of going forward as between examiner and applicant.
13 In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir.
14 1990). The term “prima facie case” refers only to the initial examination
15 step. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
16 1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
17 1976). As discussed in In re Piasecki, the examiner bears the initial burden,
18 on review of the prior art or on any other ground, of presenting a prima facie
19 case of unpatentability. If that burden is met, the burden of coming forward
20 with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d
21 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
22
23 2. Claims are given the broadest reasonable construction consistent with
24 the specification. In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir.
25 1997).
26
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