Appeal 2007-1558
Application 10/635,362
29. An inscription is something that is inscribed. Merriam-Webster’s
Collegiate Dictionary 646 (11th ed. 2005)
30. To inscribe is to write, engrave, or print as a lasting record. Merriam-
Webster’s Collegiate Dictionary 646 (11th ed. 2005)
PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the claim
is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986).
The Examiner bears the initial burden of presenting a prima facie case of
obviousness in rejecting claims under 35 U.S.C. § 103. See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
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),
viz., (1) the scope and content of the prior art; (2) the differences between the prior
art and the claims at issue; and (3) the level of ordinary skill in the art. “[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
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