Appeal No. 1998-2566
Application 08/685,420
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)].
Each of the examiner’s rejections under 35 U.S.C. §
103 fundamentally relies on the improper finding of
anticipation discussed above. Because of this improper
finding of anticipation, the examiner has never addressed the
obviousness of the differences between the claimed invention
and the teachings of Erpelding. Therefore, the examiner’s
rejections under 35 U.S.C. § 103 do not establish a prima
facie case of obviousness.
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007