Appeal No. 1999-1180
Application No. 08/751,557
Once a prima facie case of obviousness is established, the
burden of proof then shifts to the appellants to rebut the prima
facie case by persuasive argument or evidence (e.g., unexpected
results). In re Mayne, 104 F.3d 1339, 1343, 41 USPQ2d 1451,
1455 (Fed. Cir. 1997)("With a factual foundation for its prima
facie case of obviousness shown, the burden shifts to applicants
to demonstrate that their claimed fusion proteins possess an
unexpected property over the prior art.").
Referring to Preparation Examples 1-8 and Comparison
Example 1 of Morikawa, the appellants argue that one of ordinary
skill in the art would have found no motivation to combine the
teachings of Moore with Morikawa. (Appeal brief, pages 6-7; 11-
12.) Specifically, the appellants' position is that a catalyst
including Pd/Ta, Pd/Nb, Pd/Ti, Pd/Zr, Pd/Hf, Pt/Zr, or Rh/Zr
provided substantially the same conversion and selectivity as
compared to a catalyst including only Pd, and thus one of
ordinary skill in the art would not have been led to use
Morikawa's catalyst in Moore's process. (Appeal brief, pages 6-
7.) We cannot agree.
As admitted by the appellants (id. at page 12), Morikawa
teaches that a catalyst based on both Pd and another metal such
7
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