Appeal No. 96-3486
Application No. 08/291,565
The examiner’s response6 to this evidence is largely
dismissive. In fact, even though appellants’ brief
places
extensive reliance on the Declaration evidence to
overcome
the prima facie case, the examiner’s answer never
addresses it. This is improper. As emphasized by the
court in Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1549,
220 USPQ 193, 199 (Fed. Cir. 1983):
It is inappropriate and injudicious to
disregard any admissible evidence in
any judicial proceeding. Hence all
relevant evidence on the obviousness
issue must be considered before a
conclusion is reached. Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530,
218 USPQ 871 (Fed. Cir. 1983).
In other words, evidence under 37 CFR § 1.132 must be
6 “The declaration and accompanying comments are not
persuasive to overcome the rejection. As explained in
the final rejection, both the references teach as
alternative embodiment - the preparation of the catalyst
by spray drying a suspension containing the support and
soluble salts of Ce and Fe. One could have taken this
teaching and compared with other possible alternative
method of preparation of the catalyst and established the
comparative advantages of the catalyst prepared by the
prior art method.” Advisory Action, Paper No. 20, mailed
March 6, 1996.
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