Ex Parte SHOJI et al - Page 6



          Appeal No. 2002-1674                                                        
          Application 09/089,901                                                      


          in the art the obviousness of the invention as set forth in                 
          claims 1-20.  Accordingly, we affirm.                                       
               Appellants’ arguments in response to the Examiner’s                    
          rejection of the appealed claims are organized according to a               
          suggested grouping of claims indicated at page 5 of the Brief.              
          We will consider the appealed claims separately only to the                 
          extent separate arguments for patentability are presented.  Any             
          dependent claim not separately argued will stand or fall with 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).  Only those arguments actually made by               
          Appellants have been considered in this decision.  Arguments                
          which Appellants could have made but chose not to make in the               
          Briefs have not been considered [see 37 CFR § § 1.192(a)].                  
               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             


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