Appeal No. 1999-0058
Application No. 08/701,878
skill in the art to arrive at a process encompassed by appealed
claim 1, 21, or 22 in order to produce a useful catalyst as
described in Bournonville, motivated by a reasonable expectation
of success. In re O'Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988).
Because there is substantial evidence to support the
examiner's determination of a prima facie case of obviousness,
the burden of proof was properly shifted to the appellants to
rebut the prima facie case by convincing argument or evidence
(e.g., unexpected results). In re Mayne, 104 F.3d 1339, 1343, 41
USPQ2d 1451, 1455 (Fed. Cir. 1997) ("With a factual foundation
for its prima facie case of obviousness shown, the burden shifts
to applicants to demonstrate that their claimed fusion proteins
possess an unexpected property over the prior art."). The
question as to whether unexpected advantages have been
demonstrated is a factual question. Id. (citing In re Johnson,
747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984)).
Thus, it is incumbent upon the appellants to supply the factual
basis to rebut the prima facie case of obviousness established
by the examiner. See, e.g., In re Klosak, 455 F.2d 1077, 1080,
173 USPQ 14, 16 (CCPA 1972).
The appellants argue that Bournonville is "generic to the
incorporation of [G]roup VIII metal through the use of both
aqueous and organic solution of the metal." (Appeal brief, page
5.) This argument has no merit. Bournonville undeniably teaches
the impregnation of the support with an aqueous solution of
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