Appeal No. 1997-1194
Application No. 08/084,668
and, accordingly, will stand or fall with their base claim.
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 Appellants
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, 1051, 189
USPQ 143,
147 (CCPA 1976).
With respect to independent claims 1, 6, and 13, the
Examiner proposes to modify the network system disclosure of
Shinohara which includes a router for transferring data
between local area networks (LANS) but which lacks any
suggestion of a consideration of a cost factor in the
selection of a particular route for data transfer. To address
6
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