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 7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 NextLast modified: November 3, 2007