Appeal No. 1999-1941
Application No. 08/629,700
OPINION
We have considered the rejections advanced by the Examiner
and the supporting arguments. We have, likewise, reviewed the
Appellant's arguments set forth in the brief.
We reverse.
In our analysis, we are guided by the general proposition
that 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, 1052, 189 USPQ 143,
147 (CCPA 1976). We are further guided by the precedent of our
reviewing court that the limitations from the disclosure are not
to be imported into the claims. In re Lundberg, 244 F.2d 543,
113 USPQ 530 (CCPA 1957); In re Queener, 796 F.2d 461, 230 USPQ
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007