Appeal No. 2001-0665
Application 08/439,920
pages 7 and 8). Again, appellants’ argument and the facts on which it is predicated are
not controverted by the examiner.2
In conclusion, assuming arguendo that claims 20, 22, 28, and 30 would have been
prima facie obvious over the cited prior art, we agree with appellants that uncontroverted
evidence of record is sufficient to rebut any such prima facie case.
For these reasons, the examiner’s rejection of claims 20, 22, 28, and 30 under 35
U.S.C. § 103 as unpatentable over the combined disclosures of Holton and Greene is
reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Douglas W. Robinson )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Demetra J. Mills )
Administrative Patent Judge )
2 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. Here, the examiner’s failure to reweigh the prima facie case of obviousness in light of
appellants’ rebuttal argument constitutes reversible error.
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