Appeal No. 1996-0696
Application 08/150,268
not provided evidence or technical reasoning which shows that
one of ordinary skill in the art would have reasonably
expected the product mix to include some of the
monofluorinated product recited in appellants’ claim 10. The
examiner provides only speculation, and such speculation is
not a sufficient basis for a prima facie case of obviousness.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Sporck, 301
F.2d 686, 690, 133 USPQ 360, 364 (CCPA 1962). Accordingly, we
reverse the examiner’s rejections.
Since no prima facie case of obviousness has been
established, we need not address the experimental results
relied upon by appellants. See 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).
DECISION
The rejections of claims 10, 17, 18 and 22-25 under 35
U.S.C. § 103 over McBee and/or WO ‘909 are reversed.
REVERSED
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