Appeal No. 2006-1834
Application No. 09/852,253
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1
based on the combination of Petek and Sloane, after reviewing the Examiner’s analysis
(Answer, pages 3 and 4), it is our opinion that the stated position is sufficiently reasonable
that we find that the Examiner has at least satisfied the burden of presenting a prima facie
case of obviousness. The burden is, therefore, upon Appellant to come forward with
evidence and/or arguments which persuasively rebut the Examiner’s prima facie case.
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 Briefs have not
been considered and are deemed waived [see 37 CFR § 41.37(c)(1)(vii)].
With respect to independent claim 1, Appellant’s 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 proper motivation for the Examiner’s proposed combination of Petek
and Sloane has not been established. According to Appellant (Brief, page 5), the ordinarily
skilled artisan would not have been motivated to utilize Sloane’s two layer sound board
teaching to modify the three layer sound board of Petek by making Petek’s sound board of
only two layers. In Appellant’s view (id.), Petek “teaches away” from the use of only a two
layer sound board since Petek’s disclosure requires a three-layer board, i.e., two relatively
stiff outer layers and a relatively light-weight inner layer.
After careful review of the disclosures of Petek and Sloane in light of the arguments
of record, however, we are in general agreement with the Examiner’s position as stated in
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