Appeal No. 1998-1917
Application No. 08/766,984
dependent claims 4, 5, 13, and 15. We will consider the 3
claims separately only to the extent that separate arguments
are of record in this appeal. Dependent claims 3, 6, 9-12,
and 14 have not been argued separately in the Briefs and,
accordingly, will stand or fall with their base claims. Note
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker,
702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
As a general proposition 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 Appellants
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.
3The separate patentability of the limitations of
dependent claims 4, 5, 13, and 15 is argued at page 4 of the
Reply Brief.
6
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