Appeal No. 97-0222
Application 08/115,561
We consider first the examiner’s rejection of the appealed
claims under the judicially created doctrine of obviousness-type
double patenting over claims 1-32 of copending application, U.S.
Serial No. 08/115,564, in view of Hunt. Appellants submit at
page 14 of the principal Brief that they will not address the
merits of this rejection at this time, but will file a terminal
disclaimer if one becomes necessary. Consequently, perforce, we
will sustain the examiner’s rejection.
We now turn to the rejection of the appealed claims under
35 U.S.C. § 103 over Hunt in view of the admitted prior art
(claims 1-29, 32-35 and 42-44), in view of Parker (claims 30 and
31), and in view of Yamane (claims 36 and 37). To the extent the
prior art applied by the examiner establishes a prima facie case
of obviousness for the claimed subject matter, appellants have
proffered a declaration by Everett W. Bennett, a Ph.D. in Organic
Chemistry, as evidence of nonobviousness, i.e., unexpected
results. Therefore, we must, as a matter of law, begin anew and
weigh the evidence of obviousness against the evidence of
nonobviousness. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976). However, when we look to the
Examiner’s Answer for the examiner’s treatment of the declaration
evidence, we find that the examiner committed reversible error.
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