Appeal No. 1998-0496
Application 08/356,966
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)].
Claims 2-6 and 8-11 depend from either claim 1 or claim 7.
The examiner relies on Saito for teaching all the limitations of
claims 1 and 7 as noted above. The Fukuda reference does not
overcome the deficiencies in Saito that were discussed above.
Thus, there are differences between the claimed invention and the
teachings of Saito and Fukuda which have not been properly
addressed by the examiner. The failure to address the
obviousness of these differences between the claimed invention
and the applied prior art results in a failure to properly
establish a prima facie case of obviousness. As noted above, the
failure to make the prima facie case of obviousness by the
examiner must result in a reversal of the rejection made under 35
U.S.C. § 103.
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