Appeal No. 2004-0507
Application No. 09/476,862
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 Appellant 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 In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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, 1051-52, 189 USPQ 143,
147 (CCPA 1976).
With respect to independent claim 7, after reviewing the
Examiner’s analysis (Answer, pages 7 and 8) of the claimed
invention relative to the applied prior art, it is our view that
such analysis carefully points out the teachings of the Shinada
and Landry references, reasonably indicates the perceived
differences between this applied prior art and the claimed
invention, and provides reasons as to how and why the prior art
teachings would have been modified and/or combined to arrive at
the claimed invention. In our opinion, the Examiner's analysis
is sufficiently reasonable that we find that the Examiner has at
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007