Appeal No. 2001-0376
Application No. 08/780,204
complying with the burden of presenting a prima 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).
In the instant case, the examiner cites either one of Zuercher or APA for a
showing of the prior art method of testing switches via a plot of resistance force versus
movement but admits that neither discloses, discusses or suggests taking the second
derivative of the plot. Appellants do not disagree.
However, in order to provide for the deficiency of the primary references in not
providing for taking the second derivative, the examiner cites any one of four secondary
references, each mentioning a second derivative, for the proposition that this is a “well
known technique for monitoring plotted data.” The examiner concludes that it would
have been “obvious” to apply the use of such a standard technique to determine
inflections to the graphed data in Zuercher or APA “since it is known that such
derivatives can be used to monitor changes in the relationship between variables and
thus would have been of obvious interest” [answer-page 5].
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