Appeal No. 1998-0340
Application 08/449,682
either expressly or under the principles of inherency, each
and every element of a claimed invention. See RCA Corp. v.
Applied Digital Data Sys., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984). While applying the test of obviousness,
we keep in mind the guidelines of our reviewing court. The
pertinent general proposition is 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).
Rejection of under 35 U.S.C. § 102
Claims 1-3, 5, 6, 8 and 9 are rejected as being
anticipated by Inaba. We take for our analysis independent
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007