Appeal No. 96-1191
Application 08/344,624
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).
With respect to independent claims 1 and 3, appellant
argues that (1) the examiner has failed to establish a prima
facie case of obviousness; (2) the examiner has not made
appropriate factual findings; and (3) the examiner has
provided no motivation to modify Kadowaki so as to arrive at
the claimed invention [brief, pages 7-11]. Since the examiner
has alternatively rejected the claims under Sections 102 and
103, there is little discussion on the question of
obviousness. The examiner’s only comment is that it would
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