Appeal No. 2006-2225
Application No. 09/815,439
than expressly stated in the references. The test for an implicit showing is what the
combined 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, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-1317 (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). 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 to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
Regarding independent claims 1 and 24, the examiner's rejection essentially finds
that Herz teaches every claimed feature except for sub-items representing at least one of
depth information and breadth information relating to the item. The examiner cites Kiger
as teaching such sub-items in a menu-driven information retrieval system. The examiner
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