Appeal No. 2004-1903
Application No. 09/973,741
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have
made but chose not to make in the Briefs have not been considered
and are deemed to be waived [see 37 CFR § 41.37(c)(1)(vii)].
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, 1052, 189 USPQ 143, 147 (CCPA 1976).
With respect to independent claim 1, the representative claim
for Appellant’s first suggested grouping (including claims 1-7, 9,
and 21-23), Appellant’s arguments in response to the Examiner’s
35 U.S.C. § 103(a) rejection assert a failure to establish a prima
facie case of obviousness since proper motivation for the proposed
combination of Rode and Harbottle has not been established.
4
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