Appeal No. 1997-3644 Page 3
Application No. 08/120,041
appellant’s position on the basis that the examiner fails to
establish a
prima facie case of obviousness for the claimed subject1
matter. Accordingly, we will not sustain the examiner's
stated rejections.
The examiner appears to rely on each of Amidon and
Mastromatteo for describing classes of acceleration compounds
for use in rubber vulcanization that are generic to the
limited subgenus/species of appellant. However, the examiner
has not adequately explained how one of ordinary skill in the
art would have been led to select an acceleration compound
corresponding to or within the limited class of compounds as
herein claimed from the teachings of the separately applied
references.
We do not share the examiner’s viewpoint regarding the
apparently applied per se rule of obviousness that “choosing
compounds from a generic description would be obvious...”
(answer, page 4). As stated by the Federal Circuit in
1We note that it is the examiner who bears the initial burden of presenting a
prima facie case of obviousness in rejecting claims under 35 U.S.C. § 103. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
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