Appeal 2007-2135
Application 10/269,840
using the sulfur and the accelerator” of Früh in the process disclosed by the
primary references (id.).
Accordingly, the dispositive issue presented from the record in this
appeal is whether the Examiner has properly combined the references by
substituting the sulfur vulcanizing agent and accelerator of Früh in the
process disclosed by the Noecker patents.1
We determine that the Examiner has not established a prima facie case
of obviousness in view of the reference evidence. Therefore, we REVERSE
both grounds of rejection present in this appeal essentially for the reasons
stated in the Brief and Reply Brief, as well as those reasons set forth below.
OPINION
It is well settled that the initial burden of presenting a prima facie case
of obviousness based on the disclosures of the applied prior art references
rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Any analysis supporting obviousness
should be made explicit and should “identify a reason that would have
prompted a person of ordinary skill in the art to combine the elements” in
the manner claimed. KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739,
82 USPQ2d 1385, 1396 (2007). “When the legal conclusion [of
obviousness] is not supported by facts, it cannot stand.” In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
1 Since the Examiner recognizes that Noecker ‘552 is “essentially1
cumulative” to the disclosure of Noecker ‘320 (Answer 3), we will limit our
discussion to only Noecker ‘320. However, our remarks equally apply to
Noecker ‘552.
4
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