Appeal No. 1998-2680
Application 08/681,653
suggestion or implication in the prior art as a whole or knowledge generally available to
one having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden 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 Id.; 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 appellants have been considered in this decision. Arguments which appellants
could have made but chose not to make in the brief have not been considered [see 37
CFR § 1.192(a)].
The examiner’s rejection of the appealed claims is set forth on pages 4-10 of the
examiner’s answer. In this rejection, the examiner asserts that Watkins teaches all the
steps of the claimed invention except for the step of comparing the obtained design
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