Appeal No. 1996-3028
Application No. 08/270,429
appellant’s rebuttal evidence (Appendices B and C attached to
the Brief). In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276,3
1278 (Fed. Cir. 1987). Accordingly, the examiner’s rejections
of the claims on appeal under 35 U.S.C. § 103 as unpatentable
over Ermens or Girsh are reversed.
OTHER ISSUES
Upon return of this application to the jurisdiction of
the examiner, the examiner and appellant should reconsider the
patentability of at least claim 14 under the doctrine of
obviousness-type double patenting over claims 9, 12 and 15 of
the parent of this application, now U.S. Patent No. 5,352,468.
3We note that the Dairy Research Review article, Appendix
B, directly refutes the examiner’s contention that reverse
osmosis only differs from ultrafiltration “by a matter of
degree” and “[i]t is not like it is a completely different
process.” (Supplemental Answer, Paper No. 18, page 2). The
examiner has failed to consider appellant’s evidence in
rebuttal to the
§ 103 rejection (i.e., Appendices B and C, see the
Supplemental Answer, Paper No. 18, page 5, last paragraph).
“Objective evidence of nonobviousness, when present, must
always be considered before reaching a legal conclusion under
§ 103. [Citation omitted].” Pentec, Inc. v. Graphic Controls
Corp., 776 F.2d 309, 315, 227 USPQ 776, 770 (Fed. Cir. 1985),
emphasis added. We also note that the Mans article (Appendix
C) is dated April 1993 and there has been no determination as
to whether this article was published before appellant’s
effective filing date.
10
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