Appeal No. 2000-1284
Application No. 08/576,730
facie case of obviousness. Note In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is
met, the burden 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 Id.; 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). Only those arguments actually made by appellant
have been considered in this decision. Arguments which appellant
could have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
The examiner’s rejection is set forth on pages 3-7 of the
answer. In this rejection the examiner sets forth how he
interprets each of the claimed subprocesses of independent claim
1 and the means of independent claim 9. With respect to
independent claims 1 and 9, which stand or fall together [brief,
page 3], appellant argues that McInerney does not recite an
algorithm for providing a program or application which includes
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