Appeal No. 1998-2107
Application No. 08/137,624
note appellants’ arguments (Brief, page 19-20) against this rejection. Conspicuous
by its absence from this record, however, is the examiner’s response to appellants’
arguments.
As stated in In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
Cir. 1986) “[i]f a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by experiment, prior art
references, or argument, the entire merits of the matter are to be reweighed.”
Accord In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976)(“[w]hen prima facie obviousness is established and evidence is submitted in
rebuttal, the decision-maker must start over”).
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