Appeal 2007-1928
Application 10/163,282
(2003). Express anticipation occurs when the prior art expressly discloses each
limitation (i.e., each element) of a claim. Id. In addition, “[i]t is well settled that a
prior art reference may anticipate when the claim limitations not expressly found in
that reference are nonetheless inherent in it.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). It is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of obviousness.
See id. at 1073, 5 USPQ2d at 1598. In so doing, the examiner is expected to 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. In addition to these factual determinations, the examiner
must also provide “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)). Only if this
initial burden is met does the burden of coming forward with evidence or argument
shift to the appellant. 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
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