Appeal No. 1999-1193
Application No. 08/429,504
Claims 2 to 6, 9 to 12, 18 to 22, and 25 to 28
The Examiner rejects these claims under 35 U.S.C. § 103
as obvious over Crump.
In our analysis, we are guided by the general proposition
that 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 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 precedent 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, 113 USPQ 530 (CCPA
1957); In re Queener, 796 F.2d 461, 230 USPQ 438 (Fed. Cir.
1986). We also note that arguments not made separately for
6
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