Appeal No. 2006-1995
Application No. 10/662,263
conclusion. 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 the Examiner’s 35 U.S.C. § 103(a) rejection of appealed independent
claim 1 based on the combination of Parienti and Renner, Appellants assert (Brief,
pages 7 and 8; Reply Brief, pages 3 and 4) that the Examiner has failed to set forth a
prima facie case of obviousness since proper motivation for the proposed combination
of references has not been established. After reviewing the arguments of record from
Appellants and the Examiner, we are in general agreement with Appellants’ position as
stated in the Briefs.
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