Appeal No. 96-1903
Application 08/263,368
proposition that 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).
Rejection of Claims 1, 9, 10, 14 to 16,18 and 19 under 35
U.S.C. § 103
These claims are rejected as being obvious over
Hubbard in view of APA, Auslander and Calvi. We first
consider claim 9 which is the broadest claim. We have
reviewed the Examiner’s final position on the rejection of
these claims [supplemental answer, pages 2 to 5] and
Appellant’s argument [second reply brief, pages 2 to 3]. We
agree with the Examiner that Hubbard shows means for printing
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