Appeal No. 1999-2231
Application No. 08/278,774
reference appellants’ Brief3, and appellants’ Reply Brief4 for the appellants’
arguments in favor of patentability. We note the examiner considered the Reply
Brief, and entered it into the record.5
CLAIM GROUPING:
Appellants state (Brief, page 3) that “claims 1-3, 8-9, 14-16 and 18 shall
stand as a group; claims 6-7 shall stand as a separate group….” The Brief
contains separate arguments for each grouping. Accordingly, group I: claims 1-
3, 8, 9, 14-16 and 18 stand or fall together, and group II: claims 6 and 7 stand or
fall together. Therefore, with respect to group I, we limit our discussion to
representative independent claim 1, claims 2-3, 8, 9, 14-16 and 18 will stand or
fall together with claim 1. With respect to group II, we limit our discussion to
representative claim 6, claim 7 will stand or fall together with claim 6. In re
Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
THE REJECTION UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests
on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In meeting this burden we note that “the test for obviousness is
not express suggestion of the claimed invention in any or all of the references
but rather what the references taken collectively would suggest to those of
ordinary skill in the art presumed to be familiar with them.” In re Rosselet, 347
F.2d 847, 851, 146 USPQ 183, 186 (CCPA 1965).
3 Paper No. 28, received May 20, 1998.
4 Paper No. 31, received August 24, 1998.
5 Paper No. 32, mailed September 3, 1998.
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