Appeal No. 1999-0225
Application No. 08/563,188
its base claim. 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).
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 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).
With respect to the 35 U.S.C. § 103 rejection of independent
claim 1 (the representative claim for Appellants’ first suggested
grouping including claims 1, 3, 4, 6, and 7), the Examiner, as the
basis for the obviousness rejection, proposes to modify the
recording and reproducing editing system disclosure of Schnorf.
According to the Examiner, Schnorf discloses the claimed invention
except for “... the disc, Tape/VCR, and the first and second
input/output means all being directly connected to the data
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