Appeal No. 2005-2619
Application No. 09/734,826
Only those arguments actually made by appellant have been considered in this
decision. Arguments that appellant could have made but chose not to make in the brief
have not been considered. We deem such arguments to be waived by appellant [see 37
CFR § 41.37(c)(1)(vii) effective September 13, 2004 replacing 37 CFR § 1.192(a)]. We
note that appellant has elected to group ALL claims as standing or falling together at
page 4 of the Brief. Therefore, we select independent claim 1 and address appellant’s
arguments thereto.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must
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