Appeal No. 2007-0180 Page 5
Application No. 10/663,843
Here, the Examiner has rejected the claims as obvious in view of Schmitt. It
is not necessary that the prior art reference describe a specific example of the
claimed subject matter, only that it would have fairly suggested it to the skilled
person. We find that the Examiner has set forth a sound rationale for his
conclusion that the claimed subject matter is prima facie obvious in view of
Schmitt and the secondary references. See Answer 4: 16 to 6: 20. The Examiner
has pointed to disclosure in Schmitt of the same ingredients recited in claim 1, in
overlapping amounts,1 and has explained why the skilled worker would have been
motivated to choose them. In addition, the Examiner has explained that the choice
of a pyrethroid as required in claim 1 would have been obvious to the person of
ordinary skill in the art for its known wood-protecting activity. Answer 5 and
6: 13 to 7: 4. Appellants have not identified any defect in this reasoning.
“When the PTO shows prima facie obviousness, the burden then shifts to the
applicant to rebut it. In re Dillon, 919 F.2d 688, 692 [16 USPQ2d 1897] (Fed. Cir.
1990) (en banc). Rebuttal may take the form of ‘a comparison of test data showing
that the claimed compositions possess unexpectedly improved properties . . . that
the prior art does not have, that the prior art is so deficient that there is no
motivation to make what might otherwise appear to be obvious changes, or any
other argument . . . that is pertinent.’ Id. at 692-93 (citations omitted).” In re
Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1954 (Fed. Cir. 2005). Appellants
assert that “any prima facie case of obviousness has been overcome by unexpected
1 When there is a range disclosed in the prior art, and the claimed invention
overlaps or falls within that range, there is a presumption of obviousness. In re
Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003); Iron
Grip Barbell Co. v. USA Sports, 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228
(Fed. Cir. 2004).
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