Appeal No. 95-1296
Application 08/073,257
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.
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).
Appellants’ initial argument is that the examiner has
failed to make out a prima facie case of obviousness. Appellants
should not confuse the prima facie case with the ultimate
determination of the relative persuasiveness of the substantive
arguments in support of the rejection. In order to satisfy the
burden of presenting a prima facie case of obviousness, the
examiner need only identify the teachings of the references,
identify the differences between the prior art and the claimed
invention, and provide a reasonable analysis of the obviousness
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