Appeal No. 1998-1152
Application 08/489,827
speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have been
motivated to make the modifications of the prior art salts necessary to arrive at the claimed . . . salt.”);
In re Grabiak, 769 F.2d 729, 731-32, 226 USPQ 870, 872 (Fed. Cir. 1985) (“[W]e have concluded
that generalization should be avoided insofar as specific chemical structures are alleged to be prima
facie obvious one from the other. . . . [I]n the case before us there must be adequate support in the
prior art for the ester/thioester change in structure, in order to complete the PTO’s prima facie case
and shift the burden of going forward to the applicant.”).
To the extent that a prima facie case of obviousness had been made out by the examiner over
Schnur in view of Kita, the factual arguments presented by appellants in rebuttal shifted the burden back
to the examiner to again establish the factual underpinning of a prima facie case under § 103(a) in order
to maintain each of the grounds of rejection. See, e.g., Oetiker, supra. This the examiner has not
done.
The examiner’s decision is reversed.
Reversed
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
PETER F. KRATZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
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