Appeal No. 1999-0011
Application No. 08/428,812
in the light of the Specification. Therefore, we cannot
sustain rejections of claims 1 to 10 and 12 to 14 under 35
U.S.C. § 112, second paragraph.
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 Applicants 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 disclosure of our reviewing
court that the limitations from the disclosure are not to be
imported into the claims. In re Lunderberg, 244 F.2d 543, 113
USPQ 530 (CCPA 1957); In re Queener, 796 F.2d 461, 230 USPQ
438 (Fed. Cir. 1986). We also note that the arguments not
made separately for any individual claim or claims are
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