Appeal No. 96-4005
Application 08/183,531
made no specific reference to particular claims to which certain arguments may apply. However, since
the Examiner has addressed all of the claims individually, we will consider the claims separately to the
extent that separate arguments are of record in this appeal.
With respect to the rejection of claim 4 under the third paragraph of 35 U.S.C. § 112, we
agree with the Examiner that this claim is improperly dependent on canceled claim 3. We note that
Appellant, while commenting on the failed attempt to correct the dependency problem at page 2 of the
Brief, does not contest the appropriateness of this rejection. Accordingly, the rejection of claim 4
under 35 U.S.C. § 112, third paragraph is sustained.
We now consider the 35 U.S.C. § 103 rejection of claims 1, 2, 4, and 5 as unpatentable over
Feuerstein and the admitted prior art. As a general proposition in an appeal involving a rejection under
35 U.S.C. § 103, an Examiner is under a burden to make out a prima facie case of obviousness. If that
burden is met, the burden of going forward then shifts to Appellant to overcome the prima facie case
with argument and/or evidence. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686
(Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In
re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
4
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