Appeal No. 1997-3580
Application 08/400,002
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden 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 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)].
We consider first the rejection of claims 5, 7 and 17
based on the teachings of Walls and Sathi. These claims stand
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