Appeal No. 1997-1117
Application No. 08/300,703
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 Appellant
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).
In making the obviousness rejection of representative
independent claim 1 from Group I, the Examiner has pointed out
the teachings of Weiss, Harder, Elliot, Fumanelli, and Warren,
has reasonably indicated the perceived differences between
this prior art and the claimed invention, and has provided
reasons as to how and why the prior art references would have
been modified and/or combined to arrive at the claimed
invention (Answer, pages 2-6). In our view, the Examiner's
analysis is sufficiently reasonable that we find that the
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