Appeal No. 1998-2264
Application No. 08/439,793
In rejecting a claim 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 the applicant 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 (CCPA 1976).
We are further guided by the precedents of our reviewing
court that the limitations from the disclosure are not to be
imported into the claims. In re Lundberg, 244 F.2d 543, 548,
113 USPQ 530, 534 (CCPA 1957); In re Queener, 796 F.2d 461,
463-64, 230 USPQ 438, 440 (Fed. Cir. 1986). We also note that
the arguments not made separately for any individual claim or
claims are considered waived. See 37 CFR § 1.192 (a) and (c).
In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ 2d
1281, 1285 (Fed. Cir. 1991) (“It is not the function of this
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