Appeal No. 2006-2011
Application No. 09/996,720
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 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)].
With respect to the rejection of claims 1-6, 8, 9, 12, 13, 16, 17, 23, and 26 based
on Bruce taken alone, the examiner has presented findings in support of obviousness
[answer, pages 10-14]. With respect to claims 1, 3-6, 8, 9, 12, 13, 16, 17, and 23,
appellants argue that Bruce fails to disclose the step of displaying the information about
usage of the memory card on a display on the memory card because Bruce does not
suggest that the cards have displays or that any display on the cards displays
information about usage of the cards. In response to the examiner’s position that it
would have been obvious to the artisan to keep track of memory usage by affixing a
sticker to the memory, appellants argue that the claimed display on a memory card
cannot reasonable be interpreted as a sticker. Appellants also argue that the
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