Appeal 2007-1314
Application 10/227,933
in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396
(2007)). Only if this initial burden is met does the burden of coming forward with
evidence or argument shift to the Appellants. See Oetiker, 977 F.2d at 1445, 24
USPQ2d at 1444. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at
1472, 223 USPQ at 788. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ
at 788.
ANALYSIS
As noted above, it is incumbent on the Examiner to provide some articulated
reasoning with rational underpinnings to support the legal conclusion of
obviousness. In this instance, we are in agreement with the Appellants, that the
Examiner has failed to articulate convincing reasoning. The Examiner’s Answer
and Final Rejection are devoid of reasoning as to why one of ordinary skill would
draw a conclusion of obviousness from the combined teachings of Abel and Oda,
the collective knowledge in the valve art, or even conventional engineering
knowledge and common sense. Oda teaches that a rounded convex valve seating
surface is desirable when using a material that lacks toughness, such as the
disclosed ceramic valve seat. Oda does not suggest any other use for the rounded
seating surface. The Examiner has failed to provide even a common-sense reason
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