Appeal No. 2000-0170
Application No. 08/811,124
Rejections 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, 1052, 189 USPQ 143, 147
(CCPA 1976).
Lee and Wilson
In response to the examiner’s rejection of claim 42 (answer
at pages 5 and 6), over Lee and Wilson, appellants argue (brief
at pages 8 through 11) that the combination of Lee and Wilson is
improper. However, we need not reach the issue of the propriety
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007