Ex Parte Cohen-solal - Page 3




              Appeal No. 2005-2290                                                                                       
              Application No. 09/896,199                                                                                 

              why one having ordinary skill in the pertinent art would have been led to modify the prior                 
              art or to combine prior art references to arrive at the claimed invention.  Such reason                    
              must stem from some teachings, suggestions or implications in the prior art as a whole                     
              or knowledge generally available to one having ordinary skill in the art.  Uniroyal, Inc. v.               
              Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.                            
              denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc. , 776                  
              F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017                             
              (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ                            
              929, 933 (Fed. Cir. 1984).  These showings by the examiner are an essential part of                        
              complying with the burden of presenting a prima facie case of obviousness.  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, 1040, 228 USPQ 685, 687 (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, 189 USPQ 143, 146-147 (CCPA 1976).  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 brief have not been                                 
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