Appeal No. 1998-2916
Application No. 08/606,975
outside of any of the ranges of the prior art. Despite a4
lack of any explicit teaching of the claimed flow rate ratio
in the prior art, the Examiner nevertheless suggests (Answer,
pages 6 and 12) the obviousness to the skilled artisan of
arriving at the claimed
flow rate ratio value through routine optimization. Our
review of the record in this application, however, reveals a
total lack of support for the Examiner’s position. We are not
inclined to dispense with proof by evidence when the
proposition at issue is not supported by a teaching in a prior
art reference, common knowledge or capable of unquestionable
demonstration. Our reviewing court requires this evidence in
order to establish a
prima facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232,
132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966).
The Examiner did not question the definiteness of the language4
“approximately 0.8" and no rejection based on the second paragraph of 35
U.S.C. § 112 is before us. In applying prior art to claim 8, the Examiner
interpreted “approximately 0.8" as reciting a value higher than 0.5, the
highest flow rate ratio suggested by the prior art, an interpretation which we
do not find to be unreasonable.
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