Appeal No. 1996-3791
Application 08/028,087
G-CSF to the lungs of mammals (Examiner’s Answer, page 5).
We need not determine whether the references establish a prima facie case of
obviousness. Appellants have relied upon rebuttal evidence in response to this new
ground of rejection (Reply Brief, page 5). As stated in In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the
matter are to be reweighed. In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984).
We find no response by the examiner indicating that the rejection was reconsidered in
light of this rebuttal evidence. The Supplemental Examiner’s Answer (Paper No. 23)
does not acknowledge or take into account this portion of appellants’ position. This is
legal error on the examiner’s part.
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