Appeal No. 2006-0002
Application No. 09/935,531
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)].
As a general proposition in an appeal involving a rejection
under 35 U.S.C. § 103, an Examiner is under a burden to make out
a prima facie case of obviousness. If that burden is met, the
burden of going forward then shifts to Appellants 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 In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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).
With respect to representative independent claim 1,
Appellants’ arguments in response to the Examiner’s 35 U.S.C.
§ 103(a) rejection assert a failure to establish a prima facie
case of obviousness since all of the claimed limitations are not
taught or suggested by the applied prior art references. In
particular, Appellants contend (Brief, pages 3 and 4) that the
display resulting from the Examiner’s proposed combination of
4
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