Appeal No. 1996-1577
Application No. 08/215,205
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 appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
The examiner indicates how he reads claim 1 on the
disclosure of Helmuth and, alternatively, why the invention of
claim 1 would have been obvious over Helmuth [answer, pages 3-
5]. A key portion of the examiner’s rejection is based on the
examiner’s position that several limitations of claim 1 relate
to an intended use of the apparatus or to “futuristic”
limitations which may not occur. According to the examiner,
these claim limitations are not entitled to patentable weight
[id., page 5].
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