Appeal No. 1997-0252
Application 08/200,820
one having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929,
933 (Fed. Cir. 1984). These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness. Note In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). 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 and
the relative persuasiveness of the arguments. See Id.; 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). Only those arguments actually
made by appellants have been considered in this decision. Arguments which appellants
could have made but chose not to make in the brief have not been considered [see 37
CFR § 1.192(a)].
We consider first the rejection of independent claims 7 and 22 which are essentially
argued together on pages 11-20 of the brief. Dependent claims 8 and 9 have been
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