Appeal No. 95-2613
Application 07/876,794
when produced in GH cells, and (ii) the declaration shows
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that GH cells properly modify the protein [LH] by
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glycosylation and modify the glycosylation portion by the
addition of sulfate, a critical determinant of its
bioreactivity in vivo.” Brief, pp. 7 and 8. According to the
appellant these results are surprising because GH cells do
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not normally produce gonadotropins. Brief, p. 8, last para.
Here, we agree with the appellant that the examiner is
merely reiterating her previous arguments and has not given
sufficient weight to the showing of unexpected results.
Regardless of the strength of the prima facie case of
obviousness, when an applicant submits objective evidence in
rebuttal, the examiner must step back and consider all the
evidence anew. In re Piasecki, supra. As set forth by the
court in In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976), “An earlier decision should not, as it was
here, be considered as set in concrete. * * * Facts
established by rebuttal evidence must be evaluated along with
the facts on which the earlier conclusion was reached, not
against the conclusion itself.” In her response, we find that
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