Application No. 2006-3067
Appeal No. 09/952,953
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,
1316-17 (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. See 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)].
We consider first the rejection of claims 21-23, 25-28, 30-33, 35, and 36 based on
the admitted prior art, Nomura, and Inoue. The examiner has explained how the
invention of these claims is deemed to be rendered obvious by the collective teachings
of the applied prior art [answer, pages 3-5]. Since appellants have argued all of these
claims as a single group, we will consider this rejection with respect to independent
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