Appeal No. 95-4356
Application 08/133,821
claims 16, 17, 20 and 24 as representative of all the claims
on appeal.
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 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. 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).
With respect to independent claim 16, the examiner has
pointed out the teachings of Fleming, has indicated the
perceived differences between Fleming and the claimed
invention, and has provided reasons as to how and why Fleming
would have been modified and/or combined with IBM and the IBM
Guide to arrive at the claimed invention [answer, pages 3-5].
In our view, regardless of the ultimate accuracy of the
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