Appeal No. 1997-2656
Application No. 07/907,472
page 14.) We disagree with appellants. Further, if the examiner has considered and
identified the teachings and corresponding line of reasoning with respect to specific
claims to establish a prima facie case, the burden then shifts to appellants to rebut the
examiner's prima facie case. In the present appeal brief and request for rehearing,
appellants go to great length to identify the differences between individual claims which
would be readily apparent to skilled artisans from a cursory reading of the claims, but
presents sparse commentary about the prior art and its application to the claimed
invention by the examiner. In most instances, appellants have not adequately rebutted
the examiner's prima facie case of obviousness. Appellants argue that "upon arguing
specific features present only in the dependent claims and their distinction over the
prior art, appellants have provided the requisite arguments." (See Request for
Rehearing at page 15.) To the extent appellants have provided arguments directed to
the "distinction over the prior art in the brief," we have modified our decision as
discussed above.
CONCLUSION
To summarize, in light of appellants' arguments, we have reconsidered the
arguments and have modified our rejection to reverse the examiner's rejection of
dependent claims 3 and 6. Since claim 7 depends from claim 6, we will similarly
reverse the rejection of claim 7. With respect to independent claims 1, 8, and 9, and
dependent claims 2, 4, 5, appellants have not convinced us of any error in our decision.
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