Appeal No. 1996-0896
Application No. 08/091,406
compounds are known to increase spontaneous polarization”
(Answer, page 6). Appellants have challenged this notice of a
well known fact and submitted evidence in rebuttal (Reply
Brief, pages 2 and 4-6, citing Goodby, Walba, and Patel). The
examiner, in the Answer to the Reply Brief, does not rebut
appellants’ challenge but merely repeats the “known fact”
(page 2). Therefore we cannot accept the examiner’s
contention as fact. In re Ahlert, 424 F.2d 1088, 1091-92, 165
USPQ 418, 420-21 (CCPA 1970); In re Lundberg, 244 F.2d 543,
551, 113 USPQ 530, 537 (CCPA 1957). Accordingly, the examiner
has not established, on this record, the prerequisite
motivation, suggestion or reason to select the appropriate
variables from the generic disclosure of Saito to arrive at
the claimed subject matter.
For the foregoing reasons, we find that the examiner has
not established a prima facie case of obviousness in view of
the reference evidence. Because we reverse on this basis, we
need not reach the issue of the sufficiency of the showing of
unexpected results (see the Brief, pages 16-17 and 19-23). In
re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
7
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