Appeal 2007-1762
Application 10/218,245
we agree with Appellants that the Examiner has failed to establish a prima
facie case of anticipation for independent claim 44. Upon review of the
citations proffered by the Examiner, and the entirety of Bilbrey, we find no
basis for sustaining the anticipation rejection presented by the Examiner.
Accordingly, we will reverse the Examiner’s rejection of independent claim
44 as being anticipated by Bilbrey. Because claim 45 depends upon claim
44, we will also reverse the Examiner’s rejection of claim 45 as being
anticipated by Bilbrey.
Obviousness
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). In addition to the findings under Graham, there
must also be “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006), cited with approval in KSR Int’l
Co. v. Teleflex Inc.,127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
“[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396.
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