Appeal No. 2006-2089
Application No. 09/778,291
As a general proposition in an appeal involving a rejection
under 35 U.S.C. § 103, an Examiner is under a burden to make out
a prima facie case of obviousness. If that burden is met, the
burden of going forward then shifts to Appellant 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 In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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 waived [see 37 CFR § 41.37(c)(1)(vii)].
Appellants’ arguments in response to the Examiner’s
35 U.S.C. § 103(a) rejection assert a failure to establish a
prima facie case of obviousness since all of the claimed
limitations are not taught or suggested by the applied prior art
references. After careful review of the disclosures of Shenoi
and Shapiro in light of the arguments of record, we are in
general agreement with the Examiner’s position as stated in the
Answer.
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