Appeal No. 2003-0340
Application No. 09/096,403
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). 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 brief have not been considered and are deemed
to be waived by appellants [see 37 CFR § 1.192(a)].
The examiner has indicated how he finds the claimed
invention to be obvious over the teachings of Pasternak and Kim
[answer, pages 5-12]. With respect to independent claims 1 and
18, appellants argue that the examiner has not identified the
second signal combining circuit nor pointed to any teaching in
the cited references that would have led the artisan to modify
the teachings of the references to provide this missing element.
Appellants also argue that the examiner has not identified a
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007