Appeal No. 1998-3267
Application 08/688,242
The examiner does not factually support his position by pointing to any specific disclosure of a
diacyl peroxide in any of the references which is either identical to or which structurally differs from the
diacyl peroxides specified in the appealed claims in one of the alleged structural relationships. Even if
the examiner did point to a particular diacyl peroxide in a reference, the mere allegation of structural
similarity is not sufficient to establish a prima facie case of obviousness. See In re Jones, 958 F.2d
347, 349-51, 21 USPQ2d 1941, 1943-44 (Fed. Cir. 1992) (“Conspicuously missing from this record
is any evidence, other than the PTO’s 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 generalizations 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.”). The
examiner’s position is further obfuscated by the allowance of claims 29 through 31 without a statement
of reasons for allowance over the same references relied on here (see above note 1).
To the extent that a prima facie case of anticipation and obviousness had been made out by the
examiner over the applied references, 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
§ 102(b) and under § 103(a) in order to maintain each of the grounds of rejection. See, e.g., Oetiker,
supra; Spada, 911 F.2d at 707 n.3, 15 USPQ2d at 1657 n.3. The examiner’s mere statement that
“[a]lthough, applicants points [sic] out that references might differ,” there is no “evidence of record to
factually establish these differences from properties and/or characteristics of prior art initiator systems” (
answer, page 4), does not carry the burden.
The examiner’s decision is reversed.
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