Appeal No. 2006-2156
Application No. 09/790,296
It is our view, after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would have suggested to one
of ordinary skill in the art the invention as recited in claims 1-20. Accordingly, we
affirm.
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
Appellants 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).
With respect to independent claim 1, 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 Yuen reference. After careful review of the
disclosure of Yuen in light of the arguments of record, however, we are in general
agreement with the Examiner’s position as stated in the Answer.
Initially, Appellants contend (Supplemental Brief, page 7; Reply Brief, page
2) that, contrary to the Examiner’s position, Yuen does not “generate a first
language phonetic vocabulary mapped to a phone set associated with the
3
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