Appeal 2007-1568
Application 09/900,375
Regarding the above rejection, Appellant contends1 that Hepp does
not fairly teach or suggest a dial face that displays a graphical representation
of a scheduled activity associated with a time of day segment displayed on
the dial face, as recited in claim 1. (Br. 5-7.) In response, the Examiner
contends that Hepp’s disclosure of an optoelectronic display including a
figurative character and a timepiece renders the claimed invention
unpatentable. (Answer 3-7.)
ISSUE
The pivotal issue in the appeal before us is as follows:
Has Appellant shown2 that the Examiner failed to establish that the
disclosure of Hepp renders the claimed invention unpatentable under 35
1 This decision considers only those arguments that Appellant submitted in
the Appeal Brief. Arguments that Appellant could have made but chose not
to make in the Brief are deemed to have been waived. See 37 C.F.R.
§ 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d 1362,
1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
2 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When
that burden is met, the burden then shifts to the applicant to rebut. Id.; see
also In re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed.
Cir. 2005) (finding rebuttal evidence unpersuasive). If the applicant
produces rebuttal evidence of adequate weight, the prima facie case of
unpatentability is dissipated. Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Thereafter, patentability is determined in view of the entire record. Id.
However, Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86,
78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998)).
3
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