Appeal No. 1997-1896
Application No. 08/476,389
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejection, we make reference to the examiner's
answer (Paper No. 11, mailed Dec. 19, 1996) for the examiner's reasoning in support of
the rejection, and to the appellants’ brief (Paper No. 10, filed Nov. 19, 1996) for the
appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claim, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
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 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
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