Appeal No. 95-2726
Application 07/994,477
examiner has established a prima facie case of obviousness.
Rather, if we assume, arguendo, that such is the case, we
would find that the examiner had erred in not properly
considering the appellants’ evidence of unexpected results.
We caution the examiner that a prima facie case is merely a
presumption of unpatentability; i.e., a legal inference which
shifts the burden of going forward to the applicant. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). It is well established that, in rebuttal, a patent
applicant may submit objective evidence of nonobviousness.
Such evidence can include unexpected results, commercial
success, licensing, long-felt need in the industry, etc.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). In the face of such evidence, the examiner must
start over. *** An earlier decision should not, as it was
here, be considered as set in concrete, and applicant’s
rebuttal evidence then be evaluated only on its knockdown
ability. Analytical fixation on an earlier decision can
tend to provide that decision with an undeservedly
broadened umbrella effect. Prima facie obviousness is a
legal conclusion, not a fact. 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 re Piasecki, 745 F.2d at
1472, 223 USPQ at 788 quoting, In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976)].
Here, we find that statements by the examiner such as:
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