Appeal No. 2005-0646 Page 9
Application No. 10/278,184
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 and the relative persuasiveness of the
arguments. 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). 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 [see 37 CFR § 41.37(c)(1)(vii)(2004)].
The examiner has indicated how he finds the claimed
invention to be unpatentable over the teachings of the applied
prior art [answer, page 5]. We find the examiner’s rejection
sufficient to at least establish a prima facie case of
obviousness. Appellants argue that neither Sato, Teshima or
Lindblom overcomes the alleged deficiencies of Lee discussed
above. Appellants also argue that there is no motivation to
combine the teachings of Lee with either Sato, Teshima or
Lindblom [brief, pages 7-9]. The examiner responds that each of
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