Appeal No. 2003-0583
Application No. 09/270,688
of ordinary skill in the art suggests the claimed subject matter.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." In re
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must
not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the agency's conclusion." In
re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002).
Appellants argue that their invention obtains the true image
of a foot by imaging a foot in a non-weight bearing and non-
compressed state. See page 6 of the brief and page 4 of the
reply brief.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is the
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