Appeal No. 2006-0277
Application No. 10/234,305
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 considered and are deemed to be
waived [see 37 CFR §41.67(c)(1)(vii)].
It appears to us that the examiner has presented a prima facie
case of obviousness with regard to the subject matter of instant
claim 1 by pointing out the disclosure of the prior art
(CyberDiner), the differences between the prior art and the instant
claimed subject matter (lack of a “wireless” device) and why it
would have been obvious to modify the prior art (CyberDiner) to
arrive at the claimed invention (because it was “well known” to use
either wired or wireless connections, a wireless connection being
but one of the obvious ways to connect a computer to a network).
Thus, the burden has been shifted to appellant to overcome the
prima facie case with argument and/or evidence.
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