Appeal Number: 2006-0965
Application Number: 10/827,051
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, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (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).
The examiner's position (Answer p. 4) is that Yates shows a clamping device
having a plurality of stop blocks that are configured to be interchangeably
interposed between the back member of the workpiece, as described in p. 1, line
100 through p. 2, line 4 of Yates. The examiner states that Yates lacks opposing
side members coupled to the front and back member that would define a channel
therebetween. To overcome this deficiency of Yates, the examiner turns to
Buchler for a teaching of a clamping device having front, back, and opposing side
members, as well as interchangeable stop blocks 1.3, as illustrated in figures 3 and
4.
Appellants assert (Brief pp. 10-11) that the examiner has misapplied the
references, and that the references teach away from each other as well as from the
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