Appeal No. 97-1932
Application 08/028,047
“why the claims...are believed to be separately patentable.
Merely pointing out differences in what the claims cover is
not an argument as to why the claims are separately
patentable.” Appellant’s arguments fail to satisfy this
requirement as a basis to have the claims considered
separately for patentability. Since appellant is considered
to have made no appropriate separate arguments for
patentability, all claims within each separate rejection will
stand or fall together. 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).
We consider first the rejection of claims 25, 26 and
29-34 under 35 U.S.C. § 103 as unpatentable over Oess in view
of Kishino. 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
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