Appeal 2007-0921
Application 10/793,878
basis and rationale for the proposed addition of a vacuum device to the die
supply unit disclosed by Carden.1
Thus, a dispositive issue raised in this appeal with respect to both of
the Examiner’s obviousness rejections is: Have Appellants identified
reversible error in the Examiner’s rejections in that the Examiner has not
discharged the burden of presenting a prima facie case of obvious. We
answer this question in the affirmative and reverse the Examiner’s
rejections.
Under 35 U.S.C. § 103(a), the examiner carries the initial burden of
establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d
1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). As part of meeting
this initial burden, the Examiner must determine whether the differences
between the subject matter of the claims and the prior art “are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art” (emphasis added).
35 U.S.C. § 103(a)(1999); Graham v. John Deere Co., 383 U.S. 1, 14,
148 USPQ 459, 465 (1966). “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct.
1727, 1739, 82 USPQ2d 1385, 1395 (2007). However, the Court further
stated that:
1 Because of our determination herein respecting the Examiner’s proposed
vacuum device addition, we need not reach the additional arguments of
Appellants with respect to the “heating” aspect of the “cylinder” required by
all of the appealed claims. The separate rejection of dependent claims 9 and
10 is also attended by the same vacuum addition issue. The additionally
applied Hamashima is not relied on for vacuum addition by the Examiner.
4
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