Appeal No. 1997-0601
Application 08/161,878
the Examiner’s position and we sustain the rejection of claims
4, 5 and 15 under 35 U.S.C. § 112, first paragraph for lack of
enablement.
Regarding the obviousness rejections, we are guided by
the general proposition that 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 Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976). We are further guided by the precedence of
our reviewing court that the limitations from the disclosure
are not to be imported into the claims. In re Lundberg, 244
F.2d 543, 113 USPQ 530 (CCPA 1957); In re Queener, 796 F.2d
461, 230 USPQ 438 (Fed. Cir. 1986). We also note that the
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