Appeal 1997-1635
Application 08/319,667
We agree with the examiner that the specification showing
does not compare the closest prior art and that the showing is
not commensurate in scope with the breadth of claim 1. Under
the facts of this case, the showing, when considered together
with Japan, does not establish non-obviousness; rather, the
opposite is the case. In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984) (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 would have been characterized as strong
or weak, the examiner must consider all of the evidence anew,
citing In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976) (facts established by rebuttal evidence must be
evaluated along with the facts on which a prima facie case is
based)).
C. Other issues
We make the following additional observations in the
event of further prosecution by way of a continuation or
otherwise.
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