Appeal No. 1997-2398
Application No. 08/354,929
rejection of claims 1, 2, 8-12 and 22 under 35 U.S.C. §
103(a).
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 Rinehart, 531 F.2d 1048, 1052, 189 USPQ 1147
(CCPA 1976).
We, of course, fully appreciate the examiner’s assessment
of the applied prior art, as well as the manner in which the
examiner proposes that the references be applied. However,
the difficulty that we have with the rejection advanced by the
examiner is that when we set aside what appellant has
disclosed to us in the present application, it is apparent to
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