Appeal No. 1999-1574
Application No. 08/321,324
Rejection under 35 U.S.C. § 103
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 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 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. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1051-52, 189 USPQ
143, 147 (CCPA 1976).
The examiner rejects claims 4 to 6, and 14 to 16 under
this ground at pages 4 and 5 of the examiner’s answer. The
examiner has used Saito for the teaching of two selection
electrodes for each of said data electrodes recited in claim
4, for example. However, Saito does not cure the deficiency
of Kitamura noted
above. Therefore, we do not sustain the obviousness rejection
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