Appeal 2007-1908
Application 10/442,950
1 rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
2 burden of establishing a prima facie case of obviousness. In re Oetiker, 977
3 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re
4 Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). It is
5 incumbent upon the examiner to establish a factual basis to support the legal
6 conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
7 1596, 1598 (Fed. Cir.1988). In so doing, the examiner is expected to make
8 the factual determinations set forth in Graham v. John Deere Co., 383 U.S.
9 1, 17, 148 USPQ 459, 467 (1966), viz., (1) the scope and content of the prior
10 art; (2) the differences between the prior art and the claims at issue; and (3)
11 the level of ordinary skill in the art. In addition to these factual
12 determinations, the examiner must also provide “some articulated reasoning
13 with some rational underpinning to support the legal conclusion of
14 obviousness.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
15 Cir 2006) (cited with approval in KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct.
16 1727, 1741, 82 USPQ2d 1385, 1396 (2007)). Only if this initial burden is
17 met does the burden of coming forward with evidence or argument shift to
18 the appellant. See Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also
19 Piasecki, 745 F.2d at 1472, 223 USPQ at 788. Obviousness is then
20 determined on the basis of the evidence as a whole and the relative
21 persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445, 24
22 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
23
24 ANALYSIS
25 From our review of Coburn '495 we find from fact 10 that the details
26 of the tool positioner can be found in the related Coburn patent '761. From
19
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