Ex parte DEWEY - Page 10




          Appeal No. 1998-0488                                                        
          Application No. 08/496,234                                                  


          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)].                     
          The rejection points to general teachings of the                            
          applied prior art, but does not address the specific language               
          of the claims.  Independent claim 1 recites that an area of                 
          the desired image which will be printed in black must be                    
          identified, and a process black registration mark must be                   
          formed within that area of the image.  We cannot find even a                
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