## Facts

- Hans Oetiker previously obtained a patent on a stepless, earless metal hose clamp.
- Oetiker later filed an application claiming an improvement to that clamp: adding a preassembly hook intended to make handling and preassembly easier.
- The patent examiner finally rejected claims 1–14 and 16–21 as obvious under 35 U.S.C. § 103.
- In support, the examiner relied on (1) Oetiker’s earlier hose-clamp patent and (2) another patent describing a hook structure used in garments (a plastic hook).
- The examiner concluded that combining the hose-clamp teaching with the garment-hook teaching would have made the claimed preassembly hook obvious.
- Oetiker argued that a person of ordinary skill in the mechanical/hose-clamp field would not have looked to the garment industry for a solution to the problem addressed by his improvement.
- The Board of Patent Appeals and Interferences affirmed the rejection, stating that the examiner had established a prima facie case of obviousness that was unrebutted by objective evidence of nonobviousness.
- On reconsideration, Oetiker asserted that the Board’s “prima facie” characterization amounted to a new ground of rejection and submitted new affidavit evidence, seeking consideration of that evidence or a remand.
- The Board declined to treat its decision as a new ground of rejection and refused to consider the new evidence.
- Oetiker appealed to the Federal Circuit, challenging both the Board’s refusal to treat the decision as a new ground (and accept the new evidence) and the merits of the obviousness rejection.

## Issues

1. Whether the Board’s statement that the examiner had established a “prima facie case of obviousness” constituted a new ground of rejection requiring procedures that would allow Oetiker to introduce new evidence.
2. Whether, on the record properly before the Board, the PTO established obviousness under 35 U.S.C. § 103 based on the combination of Oetiker’s prior hose-clamp patent and the garment-hook reference.

## Decision

- The Federal Circuit held that the Board’s reference to a “prima facie case of obviousness” did not create a new ground of rejection; it was a description of the examiner’s existing § 103 rejection.
- The Federal Circuit held that the Board was not required to accept Oetiker’s late-submitted affidavit evidence offered on reconsideration.
- The Federal Circuit affirmed the Board’s determination that the examiner had made a prima facie showing of obviousness and that Oetiker had not rebutted it on the record before the Board.
- Disposition: affirmed.

## Legal Principles

- “Prima facie obviousness” is a procedural concept used in examination and appeal; it describes whether the examiner has produced evidence and reasoning sufficient to shift the burden of going forward to the applicant.
- The examiner bears the initial burden to set out a prima facie case of obviousness supported by facts and reasoning; if that showing is not made, the applicant has no duty to submit rebuttal evidence.
- Once a prima facie case is established, the applicant must come forward with rebuttal evidence or argument; the ultimate obviousness determination is made on the whole record.
- A Board decision does not create a new ground of rejection merely by labeling the examiner’s rejection as “prima facie” or by explaining burden allocation; a new ground generally requires a materially different basis, such as new prior art or a new rationale that changes the thrust of the rejection.
- The Board may decline to consider new evidence first offered on reconsideration when the applicant’s procedural entitlement to introduce that evidence has not been triggered.

## Conclusion

In re Oetiker held that the Board’s description of the examiner’s § 103 rejection as a “prima facie case of obviousness” was not a new ground of rejection and did not require the Board to accept new affidavit evidence submitted after the decision; on the record before the Board, the Federal Circuit affirmed the obviousness rejection based on combining Oetiker’s prior hose-clamp patent with a garment-hook reference.


In re Oetiker, 977 F.2d 1443, 24 U.S.P.Q.2d 1443 (1992)