Appeal No. 1998-2916
Application No. 08/606,975
It is our view that the skilled artisan, having
consideredthe specification in its entirety, would have no
difficulty
ascertaining the scope of the invention recited in claims 1-6.
Therefore, the rejection of claims 1-6 under the second
paragraph of 35 U.S.C. § 112 is not sustained.3
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of the appealed claims, we note that, 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 Appellant 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,
3The Examiner, through apparent inadvertence, failed to include claim
16, which by dependence includes the language of claim 1 found objectionable
by the Examiner, in this rejection.
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