Appeal No. 2006-3040 Page 4
Application No. 10/261,196
motivation, or suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references. The test for an implicit showing is what the combined
teachings, knowledge of one of ordinary skill in the art, 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, 1316-17 (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. See 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, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
arguments actually made by appellants have been considered in this decision. Arguments
which appellants could have made but chose not to make in the brief have not been
considered and are deemed to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
We consider first the rejection of claims 1, 3-18, 23-28, 35, and 40-45 based on Bick
and Schneider. Since appellants have only presented arguments with respect to
independent claim 1, we will treat claim 1 as the representative claim for all claims
subject to this rejection. The examiner has set forth how the invention of these claims is
deemed to be rendered obvious by the collective teachings of Bick and Schneider
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