Appeal No. 1997-3684
Application No. 08/468,010
On reflection, we find it unnecessary to pass on the issue of prima facie
obviousness. Even assuming arguendo that the examiner established a prima facie
case of obviousness, on this record we find that the objective evidence of non-
obviousness in the specification (pages 5-6) serves to rebut any such prima facie
case.
We remind the examiner that a conclusion of prima facie obviousness, does
not end a patentability determination under 35 U.S.C. § 103. 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).
Here, appellants provide evidence of unexpected results. Specifically, appellants
argue (Brief, page 9) that:
The data presented on page 6 of the specification clearly
demonstrate that appellant’s compositions provide unexpectedly
superior fungicidal control at lower levels of the combined active
agents then [sic] can be achieved with the active agents applied alone
at equal or higher levels than the total combined amount of active
agent used in the combination treatment. Such results are indicative
of synergism….
Appellant concludes (Brief, page 9) that the observed reductions (~50% for
cyproconazole and 95% for dimethyldidecylammonium chloride) in the amount of
compound needed as part of the claimed composition as opposed to the use of the
compounds alone are substantial and unexpected. However, in response the
examiner argues (Brief, page 6) that “appellant’s specification results are
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