Appeal No. 2006-0848
Application No. 09/981,231
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the examiner are
an essential part of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). If that burden is met, the burden 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, 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). 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 §
41.37(c)(1)(vii)(2004)].
We consider first the rejection of claims 16 and 25 based on Abe and Douthit. Since
claim 16 depends from claim 9, and since Douthit does not overcome the deficiencies of
Abe with respect to claim 9 that were discussed above, we do not sustain the
examiner’s rejection of claim 16. With respect to claim 25, appellant argues that there is
no motivation for substituting the turntable 16 of Douthit for the mount 12 of Abe
because it would not allow the necelle 2, rotor head 4 or rotor blades 5 of Abe to be
12
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