Appeal No. 1997-1336
Application 08/267,433
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 (CCPA 1976). Only those arguments actually made
by appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
At the outset, we note that appellant’s initial argument
is that the examiner has failed to make out a prima facie case
of obviousness. Appellant should not confuse the prima facie
case with the ultimate determination of the relative
persuasiveness of the substantive arguments in support of the
rejection. In order to satisfy the burden of presenting a
prima facie case of obviousness, the examiner need only
identify the teachings of the references, identify the
differences between the prior art and the claimed invention,
and provide a reasonable analysis of the obviousness of the
differences which an artisan might find convincing in the
absence of rebuttal evidence or arguments.
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