Appeal No. 95-4390
Application08/066,273
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).
Appellant’s initial argument is that the examiner has
failed to make out a prima facie case of obviousness.
Appellant 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 of the differences which an artisan might
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