Appeal No. 2006-3002
Application No. 10/399,820
293, 227 USPQ 657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). 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. 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
It is considered to have been an obvious matter of product design as to
how big each compartment was relative to the other and whether they are
operated at about the same temperature since the two compartments are
well-insulated from each and can be sized accordingly to the intended use
of each compartment.
Appellant’s position (brief, page 5) is that the examiner’s assertions are
unsupported by any objective evidence and that the modifications suggested by the
examiner would result in at least one of the two compartments being inoperative for its
intended purpose. It is argued (brief, page 6) that the modifications of Shueh
suggested by the examiner would result in the freezer compartment and the fresh food
compartment being cooled to the same temperature, and the freezer compartment
being larger than the fresh food compartment. Appellant further argues (id.) that by
definition, the freezer compartment is not set to the same temperature as the fresh food
compartment.
The examiner responds (answer, page 5) that modifying Shueh such that there
are two fresh food compartments and no freezer would not have been an unobvious
modification because the size and the temperature of the compartment has no effect on
how the drain pipe functions.
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