Appeal 2007-0814
Application 10/243,417
preamble only to state a purpose or intended use for the invention, the preamble is
not a claim limitation”). Further, “[i]t is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997) (citations omitted) (anticipation rejection affirmed based on the Board’s
factual finding that the reference dispenser (a spout disclosed as useful for
purposes such as dispensing oil from an oil can) would be capable of dispensing
popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for
dispensing popcorn in a specified manner)).
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).
The Examiner can satisfy this burden by showing that some objective
teaching in the prior art or knowledge generally available to one of ordinary skill in
the art suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
A prima facie case of obviousness is established by presenting evidence that
would have led one of ordinary skill in the art to combine the relevant teachings of
the references to arrive at the claimed invention. See Id. and In re Lintner,
458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors 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
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