Appeal No. 1996-3776
Application 08/224,074
through 13 for consideration on appeal.
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of the appealed claims under 35 U.S.C. § 103 over Radeloff et al.
(Radeloff ). Throughout the answer, the examiner contends that the “materials” for the “composite2
member” specified in claim 11 “overlap with,” “read on” or are “taught by” and thus obvious over the
“iron alloys” and the “soft magnetic material” taught by Radeloff (pages 4, 5, 6, and 7). Appellants
point to the Radeloff declaration and submit that Radeloff states, inter alia, in ¶ 4 of his declaration3
that “although he has not made every possible alloy permutation within the different alloy systems
disclosed in [Radeloff], he has made a large number of alloys of each system which he has also tested”
and “has not observed any alloys made according to [Radeloff] having a composition range also within
the composition range of the present application which exhibit the properties disclosed and claimed in
the present application” (brief, page 11). We find that the examiner has not responded to appellants’
argument and evidence in the declaration with respect to this critical fact underlying the prima facie
case in his answer.
It is well settled that upon the submission of evidence or argument by appellants to the
examiner’s initial finding that the claimed invention is prima facie obvious over the applied prior art, the
patentability of the claimed invention over the applied prior art is again determined on the totality of the
record with due consideration given to appellants’ arguments. Thus, the examiner has the burden of
reestablishing a prima facie case of obviousness based on the totality of the record including
appellants’ submission taken in light of their arguments in order to continue rejecting the claims. See
generally In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Eli
Lilly & Co., 902 F.2d 943, 948, 14 USPQ2d 1741, 1743 (Fed. Cir. 1990); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Accordingly, because the examiner has not
responded to appellants’ evidence and argument that the materials of Radeloff do not fall within the
limitations of the appealed claims, the examiner has not satisfied the burden of reestablishing the prima
2See page 3 of the answer.
3The Radeloff declaration was submitted on March 10, 1995 (Paper No. 16).
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