Appeal No. 2006-1690
Application No. 10/154,185
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. See 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 appellants have been considered in this decision. 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)(2004)].
We will sustain the examiner's rejection of claims 4-7, 13, 15, 16, and 24-
26. We find that the examiner has established at least a prima facie case of
obviousness of those claims that appellants have not persuasively rebutted.
Here, the examiner has (1) pointed out the teachings of Park, (2) pointed out the
perceived differences between Park and the claimed invention, and (3)
reasonably indicated how and why Park would have been modified to arrive at
the claimed invention [answer, pages 6-9]. Once the examiner has satisfied the
burden of presenting a prima facie case of obviousness, the burden then shifts to
appellants to present evidence or arguments that persuasively rebut the
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