Appeal 2007-0981
Application 10/803,434
ISSUES
(1) Under 35 U.S.C § 103(a), with respect to appealed claims 1, 2, 4,
10-12, would one of ordinary skill in the art at the time of the
invention have been motivated and found it obvious to combine
Kniffin with Pinzon to render the claimed invention unpatentable.
(2) Under 35 U.S.C § 103(a), with respect to appealed claims 3, 5-7,
13-16, 27, and 28, would the ordinarily skilled artisan have been
motivated and found it obvious to modify the combination of
Kniffin and Pinzon by adding various tertiary references to render
the claimed invention unpatentable.
(3) Under 35 U.S.C § 103(a), with respect to appealed claim 29,
would the ordinarily skilled artisan have been motivated and found
it obvious to combine Kniffin with Pilney to render the claimed
invention unpatentable.
PRINCIPLES OF LAW
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). “[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
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