Appeal No. 2004-0650 5
Application No. 09/894,265
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 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, 1052, 189 USPQ 143, 147 (CCPA 1976).
With respect to representative independent claim 1,
Appellants’ arguments in response to the 35 U.S.C. § 103(a)
rejection assert a failure by the Examiner to establish a prima
facie case of obviousness since proper motivation for the
Examiner’s proposed combination of references has not been
established. In particular, Appellants contend (Brief, pages 4-6)
that, although the Examiner asserts (Answer, page 4) the
obviousness, in view of Ryu, of including a capacitor in the
circuit of Danki as modified by Yaklin for filtering purposes, the
Danki reference in fact teaches away from the use of a capacitor.
After reviewing the Danki reference in light of the arguments
of record, however, we are in general agreement with the Examiner’s
position as articulated in the Answer. Although Appellants assert
(Brief, page 4) that Danki’s requirement for high transmission
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