Appeal No. 2002-0942 Page 6
Application No. 09/553,715
art to make the changes that would produce the claimed invention. See In re Chu, 66
F.3d 292, 298, 36 USPQ2d 1089,1094 (Fed. Cir. 1995); Northern Telecom, Inc. v.
Datapoint Corp., 908 F.2d 931, 935, 15 USPQ2d 1321, 1324 (Fed. Cir.), cert. denied,
498 U.S. 920 (1990). This includes what could be characterized as simple changes, as
in In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) (Although a
prior art device could have been turned upside down, that did not make the modification
obvious unless the prior art fairly suggested the desirability of turning the device upside
down.).
"[W]here the prior art gives reason or motivation to make the claimed [invention]
. . . the burden (and opportunity) then falls on an applicant to rebut that prima facie
case. Such rebuttal or argument can consist of . . . any other argument or presentation
of evidence that is pertinent." In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897,
1901 (Fed. Cir. 1990) (in banc), cert. denied, 500 U.S. 904 (1991). After evidence or
argument is submitted by the applicant in response to an obviousness rejection,
"patentability is determined on the totality of the record, by a preponderance of
evidence with due consideration to persuasiveness of the argument." In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
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