Appeal No. 96-3486
Application No. 08/291,565
For the purposes of this appeal, we do not pass on
the prima facie case of obviousness because, even if the
case were made, the declaration evidence would rebut it.
At the outset, as was pointed out in In re Piasecki,
745 F.2d 1468, 1742-73, 223 USPQ 785, 788 (Fed. Cir.
1984):
When prima facie obviousness is established
and evidence is submitted in rebuttal, the
decision-maker must start over. Though the
burden of going forward to rebut the prima
facie case remains with the applicant, the
question of whether that burden has been
successfully carried requires that the entire
path to decision be retraced. 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. Though the
tribunal must begin anew, a final finding of
obviousness may of course be reached, but
such finding will rest upon evaluation of all
facts in evidence, uninfluenced by any earlier
conclusion reached by an earlier board upon a
different record. In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).4
4 “If rebuttal evidence of adequate weight is produced,
the holding of prima facie obviousness, being but a legal
inference from previously uncontradicted evidence, is
dissipated. Regardless of whether the prima facie case
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