Appeal 2007-1544
Application 09/984,227
11. One advantage asserted for Henderson’s invention is that it
“does not rely on placing test patches in specific non-image areas,” or on
cover sheets (col. 2, ll. 39-43).
12. For an image to be suitable for Henderson’s testing, there must
be provided in the image, in an area accessible to one of the densitometers,
an area of intended solid toner density approximately 1 centimeter square
(col. 5, ll. 48-52).
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellant. Piasecki,
745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner must not only
assure that the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed to support
the Examiner’s conclusion.
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the references.
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