Appeal 2005-0801
Application 09/848,628
is a procedural tool of patent examination, allocating the burdens of going
forward as between examiner and applicant. In re Spada, 911 F.2d 705, 707
n.3, 15 U.S.P.Q.2d 1655, 1657 n.3 (Fed. Cir. 1990). The term "prima facie
case" refers only to the initial examination step. In re Piasecki, 745 F.2d
1468, 1472, 223 U.S.P.Q. 785, 788 (Fed. Cir. 1984); In re Rinehart, 531
F.2d 1048, 1052, 189 U.S.P.Q. 143, 147 (C.C.P.A. 1976). As discussed
in In re Piasecki, the examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming forward with
evidence or argument shifts to the applicant. After evidence or argument is
submitted by the applicant in response, patentability is determined on the
totality of the record, by a preponderance of evidence, with due
consideration to persuasiveness of argument. See In re Spada, supra; In re
Corkil, 771 F.2d 1496, 1500, 226 U.S.P.Q. 1005, 1008 (Fed. Cir. 1985);
In re Caveny, 761 F.2d 671, 674, 226 U.S.P.Q. 1, 3 (Fed. Cir. 1985); In re
Johnson, 747 F.2d 1456, 1460, 223 U.S.P.Q. 1260, 1263 (Fed. Cir. 1984).
Hence, in the instant case, once a prima facie case of recapture is
established by the Examiner, the burden of coming forward with evidence or
argument shifts to the applicants. After evidence or argument is submitted
by the applicants in response, patentability is determined on the totality of
the record, by a preponderance of evidence, with due consideration to
persuasiveness of argument. Id.
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