Appeal 2007-1033
Application 10/091,061
Our dissenting colleague would affirm the rejection. In her view, “it
is not the Examiner’s burden to show why the evidence would not be
commensurate in scope with the claims” (infra at 11). We disagree with this
reasoning. See 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.
Though the burden of going forward to rebut the prima facie
case remains with the applicant, the question of whether that
burden has been successfully carried requires that the entire
path to decision be retraced. . . . Facts established by rebuttal
evidence must be evaluated along with the facts on which the
earlier conclusion was reached, not against the conclusion itself.
See also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984).
Thus, as we understand the case law, when evidence is submitted to
rebut a prima facie case of obviousness, the Examiner must consider anew
whether the claimed invention would have been obvious in light of all the
evidence of record. If the rejection is maintained, then, the Examiner must
explain why the rebuttal evidence is insufficient to overcome the evidence of
obviousness, including (if applicable) why the evidence is not commensurate
in scope with the claims.
We also disagree with the dissent’s reading of In re Soni. Our
colleague would seemingly prefer to follow the dissenting opinion in Soni
rather than the opinion of the court. “Dissenting opinions are often helpful
in showing positions that were not adopted by the court. However, they are
not the law.” Pioneer Hi-Bred Int’l Inc. v. J.E.M. Ag Supply Inc., 200 F.3d
1374, 1378, 53 USPQ2d 1440, 1442 (Fed. Cir. 1999). We are not free to
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