Appeal No. 1998-2273
Application 08/504,679
which it is used. Accordingly, prima facie, it is apparent that the claimed method of corrosion
inhibition is identical or substantially identical to the process taught be Merrell. Thus, the burden
falls upon appellants to establish by effective argument or objective evidence that the claimed
invention patentably distinguishes over Merrell. In re Best, 562 F.2d 1252, 1254-56, 195 USPQ
430, 432-34 (CCPA 1977). Moreover, while the issue here has been framed by the examiner as
one of obviousness under § 103, it reasonably appears to us that the method of Merrell falls
within appealed claims 1 and 2, which is indeed evidence of a lack of novelty of the claimed
invention as encompassed by the appealed claims that is, of course, “the ultimate of
obviousness.” In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982). Thus, to
the extent that the method of Merrell anticipates the claimed method encompassed by appealed
claims 1 and 13, the case of obviousness is irrebuttable. Id.
Accordingly, since a prima facie case of obviousness has been established over the
applied prior art, we have again evaluated all of the evidence of obviousness and nonobviousness
based on the record as a whole, giving due consideration to the weight of appellant’s arguments.
See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992);
In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellant’s arguments (brief, page 7-9) and we agree
with the examiner’s response thereto (answer, pages 13-15). We note again here for emphasis
that appealed claim 1 does not specify that the application of the tobacco residue to the metal
surface must be from an even slightly basic solution, and with respect to both claim 1 and claim
13, it is sufficient that the claimed invention and the disclosure of Merrell follow the same
method steps even if the reasons for doing so are not the same, as the examiner points out
(answer, pages 14-15).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Merrell with appellant’s countervailing evidence
of and argument for nonobviousness and conclude that the claimed invention encompassed by
appealed claims 1, 3, 4, 8, 13, 15, 16 and 19 would have been obvious as a matter of law under
35 U.S.C. § 103(a).
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