Appeal No. 96-3047
Application 08/053,191
in the brief.
We conclude that the rejection of claim 1 under 35 U.S.C.
§ 103 over Harrison, Freitas and Benjamin is sustained, but
the rejection of claim 2 under 35 U.S.C. § 103 over Harrison
and Freitas is not sustained. Accordingly, we affirm-in-part.
Furthermore, we reject claim 2 under 35 U.S.C. § 103 over
Harrison, Freitas and Benjamin under 37 CFR § 1. 196(b).
We first consider the rejection of claim 1 under 35
U.S.C.
§ 103 as unpatentable over Harrison, Freitas and Benjamin.
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
-5-
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