Appeal No. 1996-2115
Application 08/809,933
Upon presentation of new facts, it is necessary to consider the evidence of
obviousness relied upon by the examiner and to weigh such evidence anew against the
evidence of nonobviousness relied upon by the appellants. In re Johnson, 747 F.2d 1456,
1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
• •
The examiner asserts that “Examples 1 - 6 fail to demonstrate unexpected results
over Flesher. These examples fail to specify any particle size information. As stated
by the Board of Patent Appeals in the patent application, these examples are of little
probative value” (answer, page 11). It is clear from this statement that the examiner has
not considered the evidence presented in Table 1 in light of appellants’ statement that the
• •
particle size of comparative emulsions 1 - 6 is 1.0 micron. This is error. In re Hedges,
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986).
The data show that the polymers formed using the emulsion polymerization
procedure (reverse phase polymerization) of Examples 1*-6*, which appear to be
representative of Flesher, do not have the claimed solution viscosity (S.V.) and the
solubility quotient (CEQ). At this point the burden shifts to the examiner to explain why the
data does not provide a sufficient rebuttal of the prima facie case. Absent a fact based
explanation from the examiner why the data in Table 1 does not constitute an effective
rebuttal, the examiner has not sustained his burden. Accordingly, we reverse
this rejection.
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