Appeal No. 2003-0158
Application No. 09/514,570
(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, 1051, 189 USPQ 143, 146-147 (CCPA 1976). Only those arguments actually
made by appellant have been considered in this decision. Arguments which appellant
could have made but chose not to make in the brief have not been considered and are
deemed to be waived [see 37 CFR 1.192 (a)].
At pages 3-5 of the answer, the examiner explains how DeBan discloses the
instant claimed subject matter including a database storing payor information, such as
current monetary balances, names, address, biometric information re a plurality of
users. The examiner alleges that DeBan is silent with respect to a first storage device
including a database of payor information. The examiner turns to Barakai for a
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