Appeal No. 1996-4190
Application 08/311,710
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 Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
The Examiner has offered [answer, pages 4 to 9] a
detailed explanation of the obviousness rejection over Sun or
Stefansky.
However, we find a fatal flaw in the approach taken by the
Examiner. Each of these claims contains a limitation
corresponding to the limitation we have discussed above, i.e.,
“a magnet fixed to said base for attracting said magnetic body
and spaced apart from said magnetic body in a direction
perpendicular to a plane containing said planar locus of
points ...” We note that our finding above in regard to claim
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007