Appeal No. 2003-1883
Application No. 08/953,488 Page 13
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. 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).
We begin with claim 212. The examiner's position (answer,
page 6) is that “Mandel does not teach wherein the bin
designating means designates a bin only for a predetermined
period of time and storing means for canceling information stored
in the storing means when the first period of time ends.” To
overcome this deficiency in Mandel, the examiner turns to Salgado
for a teaching of designating a bin only for a predetermined
period of time and canceling information stored in the storing
means when the predetermined period of time ends. Appellants
assert (brief, page 11) that in the portion of Salgado relied
2 We observe that in claim 21, ultimate line "first" should be
replaced with -predetermined-. However, as the scope of the claim is
understandable, we consider this to be a formal matter, correctable by the
examiner subsequent to the appeal.
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