Appeal No. 1998-0718
Application No. 08/400,779
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 appellants have been considered in this decision.
Arguments which appellants could have made but chose not to
make in the brief have not been considered [see 37 CFR
§ 1.192(a)].
Independent claims 4 and 9 are drafted in similar
functional means language except that claim 4 is directed to a
system whereas claim 9 is directed to a computer program
product. The examiner essentially rejects claims 4 and 9 on
the same rationale. Specifically, the examiner notes that
Haswell-Smith teaches a system for monitoring the execution of
a computer program, but the examiner recognizes that Haswell-
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