Appeal No. 95-0057
Application 07/775,114
responded to these separate arguments of appellants, we will not
require strict compliance with 37 CFR § 1.192 in order for
appellants to have the claims considered separately for
patentability. Therefore, to the extent that appellants have
properly argued the reasons for independent patentability of
specific claims, we will consider such claims individually for
patentability. To the extent that appellants have made no
separate arguments with respect to some
of the claims, such claims will stand or fall with the claims
from which they depend. Note In re King, 801 F.2d 1324, 1325,
231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989,
991, 217 USPQ 1, 3 (Fed. Cir. 1983).
All the claims before us have been rejected under 35
U.S.C. § 103. As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden to
make out a prima facie case of obviousness. If that burden is
met, the burden of going forward 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 In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007