Appeal No. 95-2436
Application 07/773,949
Claims 1 through 8, 16 and 17 stand rejected under 35 U.S.C. § 103. As evidence
of obviousness, the examiner relies upon Morgan, Pedersen, Ray `87,
Ray `88, Walsh and Montelaro. We reverse.
DISCUSSION
In arguing the rejection under 35 U.S.C. § 103 on pages 11-17 of the appeal brief,
appellants rely upon a declaration filed under 37 CFR § 1.132 by co-appellant Dr. Michel
Klein. See page 12 of the appeal brief. Therein appellants argue that the evidence
provided by Dr. Klein's declaration “has been ignored by the examiner.”
In reviewing the examiner's answer (Paper No. 16, January 4, 1994), we find the
examiner only discusses Dr. Klein's declaration at page 5 where the examiner states “[i]t is
further noted that the declaration filed under 37 CFR § 1.132 of 9/8/92 is unpersuasive.”
No further explanation or analysis of the declaration appears in the answer.
As set forth in In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986):
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 Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
Here, upon being presented with Dr. Klein's declaration, the examiner needed to
take a step back and reassess the entire merits of the rejection under 35 U.S.C. § 103.
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