Appeal 2007-0902
Application 10/077,500
support of the rejections, and to Appellants’ Brief (filed Jul. 20, 2006) and
Reply Brief (filed Sep. 27, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this Appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 103
With respect to the role of the Examiner as finder of fact, the Court of
Appeals for the Federal Circuit has stated: “the 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). The Court of Appeals for the Federal
Circuit has also noted: “[w]hat the prior art teaches, whether it teaches away
from the claimed invention, and whether it motivates a combination of
teachings from different references are questions of fact.” In re Fulton, 391
F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir. 2004) (internal
citations omitted). 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). Furthermore, “‘there must be some
articulated reasoning with some rational underpinning to support the legal
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013