Appeal No. 2001-0849 Page 9
Application No. 08/990,120
Nowhere in this passage is the Declaration data addressed. Examiner seems to
have concluded that because Shanklin discloses a “dilute acid”, the Declaration
data cannot be persuasive of nonobviousness. Since we are not dealing with a
rejection under 35 U.S.C. §102 but one under 35 U.S.C. §103, it is improper to
dismiss the Declaration as examiner appears to have done. As the court stated in
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1549, 220 USPQ 193, 199 (Fed.
Cir. 1983):
It is inappropriate and injudicious to disregard any admissible evidence in any
judicial proceeding. Hence all relevant evidence on the obviousness issue must
be considered before a conclusion is reached. Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983).
Evidence under 37 CFR § 1.132 must be considered and, as mandated by the
court in 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), the
prima facie case must be considered anew in view of this evidence.
Therefore, after clarifying the prima facie case, the examiner should reweigh the
entire merits of the prima facie case in light of the data disclosed in appellants’
specification. See In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
Cir. 1986).
RECOMMENDATIONS
Upon return of the application, the examiner should step back and reassess
the patentability of the pending claims in view of the comments made herein.
Examiner should reformulate the rejection and provide a clear and consistent
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