Appeal 2006-2381
Application 09/779,125
PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). 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).
ANALYSIS
We agree with the Examiner that although the time to temperature
resulting from Egan’s heating control is stated in units of seconds (i.e., 1-5
seconds), a control in units of milliseconds would nonetheless have been
obvious to the skilled artisan at the time of the invention.
Egan’s range is equivalent to 1000 to 5000 milliseconds. Although
there is a difference in three orders of magnitude between a second and a
millisecond, nothing in independent claim 12 requires that the response
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013