Appeal No. 2006-1799
Application No. 10/269,955
and the nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art. In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006) citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000). See also In re Thrift, 298 F.3d 1357, 1363, 63 USPQ2d 2002, 2008
(Fed. Cir. 2002). 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, 1040, 228 USPQ 685, 687 (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).
With respect to appealed independent claims 21 and 29, Appellants’ arguments
in response to the obviousness rejection assert a failure by the Examiner to establish a
prima facie case of obviousness since all of the claimed limitations are not taught or
suggested by the applied prior art reference. After reviewing the applied Jacobsen
reference in light of the arguments of record, we are in general agreement with
Appellants’ position as stated in the Briefs.
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