Appeal No. 1997-1430
Application No. 08/225,756
conclusion with respect to dependent claims 15, 22, and 29.
Accordingly, we affirm-in-part.
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 Appellants
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).
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 Briefs have not been
considered [see 37 CFR § 1.192(a)].
The Examiner has grouped all of the appealed claims
together in the 35 U.S.C. § 103 rejection and proposes to
modify the microscope structure of Fujihira by relying on
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