Appeal No. 2001-1970 Page 14
Application No. 08/260,190
a person of skill in the relevant field. The enablement requirement is determined,
of course, from the perspective of those skilled in the art. See Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1335, 65 USPQ2d 1385, 1400
(Fed. Cir. 2003). (“[T]he [enablement] requirement is satisfied if, given what they
already know, the specification teaches those in the art enough that they can
make and use the invention without ‘undue experimentation.’”).
The examiner appeared to start from the position that the claims were
nonenabled, and then evaluate the declaration for whether it provided additional
“factual evidence” in rebuttal. This approach is erroneous. “If 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.” In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986). See also In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976):
When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over. . . . An
earlier decision should not . . . be considered as set in concrete,
and applicant’s rebuttal evidence then be evaluated only on its
knockdown ability. Analytical fixation on an earlier decision can
tend to provide that decision with an undeservedly broadened
umbrella effect. Prima facie obviousness is a legal conclusion, not
a fact. Facts established by rebuttal evidence must be evaluated
along with the facts on which the earlier conclusion was reached,
not against the conclusion itself.
While Hedges and Rinehart were addressed specifically to the issue of
obviousness, the same evaluation applies to any patentability determination.
Even if a prima facie case is made out, when evidence is submitted in rebuttal, all
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