Appeal No. 2004-1465
Application No. 09/316,752
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicants 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, 1039-40, 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
§ 41.37(c)(1)(vii)(2004)).
We will not sustain the examiner’s rejections of the
claims under 35 U.S.C. § 103 because the examiner has failed to
establish a prima facie case of obviousness. Each of these
rejections relies on the examiner’s findings discussed above with
respect to Shannon. Since these findings are incorrect for
reasons discussed above, the examiner’s rejection of the claims
based on Shannon is not properly supported on this record.
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