Appeal No. 1999-2413
Application No. 08/754,203
Appellants indicate (Brief, page 5) that independent claim 43
and its dependent claims 3, 4, 6-16, 24, 25, 27-37, and 41 stand or
fall together as a group, while independent claims 42 and 44 each
stand or fall separately. We will consider the claims separately
only to the extent that separate arguments are of record in this
appeal. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137
(Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3
(Fed. Cir. 1983).
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in the
art the invention as set forth in claims 3, 4, 6-16, 24, 25, 27-37,
41, 43, and 44. We reach the opposite conclusion with respect to
claim 42. Accordingly, we affirm-in-part.
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 Appellants to overcome the prima
facie case with arguments 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
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