Appeal No. 2001-1337
Application No. 08/864,944
OPINION
We have considered the rejections advanced by the Examiner
and the supporting arguments. We have, likewise, reviewed the
Appellants’ arguments set forth in the brief.
We reverse.
REJECTION 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).
We take claim 1, the independent method claim which is
broader than claim 12, for our analysis. The Examiner asserts
(answer at page 3) that “[i]t would have been obvious . . . to
have modified Mutz to have included the method step for
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007