Appeal No. 1999-0487
Application No. 08/554,425
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
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 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)].
We consider first the rejection of independent claims 1,
5, 7 and 8 based on the teachings of Mita and Yonekawa.
Appellant has indicated that claims 1 and 7 stand or fall
6
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