Appeal No. 2001-0893
Application No. 08/968,905
Capon does not provide a person of ordinary skill in the art with an expectation the
binding partner’s half-life could be extended 24 hours while retaining its full activity.
“When prima facie obviousness is established and evidence is submitted in
rebuttal, the decision-maker must start over.” In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976). “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 Hedges, 783 F.2d 1038, 1039, 228 USPQ 685,
686 (Fed. Cir. 1986). In maintaining a rejection in view of appellants’ unexpected
results “[t]he Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
In our opinion, the examiner failed to provide the evidence necessary to
maintain a prima facie case of obviousness in view of appellants’ evidence of
unexpected results. Accordingly, we reverse the rejection of claims 16, 18 and
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