Ex Parte Spencer et al - Page 10


              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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