Appeal No. 1998-1441
Application No. 08/294,779
The examiner bears the initial burden of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming forward with evidence or
argument shifts to the applicant. After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the record, by a preponderance of
evidence with due consideration to persuasiveness of argument. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In our view, upon consideration of
the rejection and the arguments by appellants in response, the combined teachings of the
references establish prima facie unpatentability of claim 55.
Appellants submit numerous arguments in defense of patentability of the claim in
the Brief, but we find them unpersuasive for substantially the same reasons expressed by
the examiner in the Answer. We add the following observations and reasoning to the
position advanced by the examiner.
Samuelson discloses structure of a liquid crystal light valve (Fig. 1) which falls within
the ambit of recitations setting forth the light valve in claim 55. As appellants appear to
recognize, Samuelson provides little detail with regard to how the light valve may be used
in practical applications. However, additional references which have been applied show
how the artisan would have used the knowledge available to one having the relevant skill to
fashion a completely realized apparatus. Appellants argue, at least by implication, that
drawing attention to the number of (i.e., how many) references upon which the examiner
relies in the rejections somehow serves to show nonobviousness of the claimed subject
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