Appeal 2007-0221
Application 09/737,404
(March 5, 1999)
Franco US 6,687,745 B1 Feb. 3, 2004
(June 22, 2000)
Claims 1-5 and 7-11, all of the appealed claims, stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Nazem in view of Nehab,
Gershman, and Rao. In a separate rejection under 35 U.S.C. § 103(a),
claims 1-5 and 7-11 stand rejected as being unpatentable over Nielsen in
view of Franco.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief and Answer for the respective details.
DISCUSSION
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).
Furthermore, “‘there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’ . . . [H]owever,
the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
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