Appeal No. 2005-2753
Application No. 09/730,238
With regard to appellant’s argument that we disregarded the last seven rejections
(Grounds VII-XIII) with but a single paragraph in our opinion, we are unpersuaded of any
error on our part. Appellant, in each ground, quoted from the final rejection and then alleged
that the final rejection had not cited clear and particular evidence of record to support this
motivation, that the rejection cannot rely on common sense alone (Ground VII), that the final
rejection improperly used hindsight, and/or that it did not cite evidence of a reasonable
expectation of success. None of these general allegations of insufficient evidence or
improper hindsight attempt to point out the error in the examiner’s specific rationale. Our
general affirmance of the rejection of these claims is commensurate with the general non-
specific nature of the arguments set forth by appellant. We need be no more specific in our
rationale than appellant has been in the general denial of obviousness. While it is true that
the examiner has the initial burden to establish a prima facie case of obviousness, once that
case has been established (which it has in the instant case for the reasons set forth by us in
our opinion), the burden shifts to appellant to argue, if he/she can, with specificity what the
alleged errors in the examiner’s case are perceived to be. A mere general allegation by
appellant that there is a “lack of clear and particular evidence of record in support of a
motivation to combine the references,” in response to the prima facie case, is insufficient to
rebut said prima facie case. The examiner set forth a prima facie case.
With regard to the Group VII claims 13 and 40, the examiner has established a prima
facie case of obviousness by assessing the claimed subject matter, determining how it differs
from the combination of Herwig and Flannery (the difference is in no explicit showing of the
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