Appeal No. 2003-0724
Application 08/858,809
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc. , 776
F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of
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, 1040, 228 USPQ 685, 687 (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, 1051, 189 USPQ 143, 146-147 (CCPA 1976). Only those arguments actually
made by appellant have been considered in this decision. Arguments which appellant
could have made but chose not to make in the brief have not been considered and are
deemed to be waived [see 37 CFR § 1.192 (a)].
Turning, first, to the rejection of claims 41, 42, 45 and 46, the examiner alleges
that Seki discloses the instant claimed subject matter but for the “individual explanation”
being displayed “near” the designated picture. In order to supply this allegedly missing
element, the examiner turns to Suzuki for a display of a pop-up menu at a location
“near” a designated graphic element and concludes that it would have been obvious to
combine this teaching of a pop-up menu being “near” a designated graphic element,
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007