Appeal No. 2006-1870 Παγε 5
Application No. 10/100,901
teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to
be solved as a whole would have suggested to those of ordinary skill in the art. In re
Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000). See also In re Thrift, 298 F. 3d
1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). 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).
The examiner's position (answer, page 3) is that Jefferies
fails to disclose the felt having a density of .20g/cm3 or more
and a hardness of 30 or more. The examiner asserts that the
modification would have been obvious “so as to provide a polished
surface with less surface roughness and fewer scratches, since it
has been held that discovering an optimum value of a result
effective variable involves only routine skill in the art. In re
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