Appeal No. 1999-0106 6
Application No. 08/594,721
column 5, lines 18-19, and claims 1 and 22 of Katz. The very specific language utilized
by Katz provides no basis for one of ordinary skill in the art to extrapolate or vary the
pH. Accordingly, no prima facie case of obviousness has been established with respect to
the claimed subject matter.
Furthermore, as we stated at the outset of our opinion, the burden of proof rests
with the examiner to establish a prima facie case of obviousness. Contrary to the
examiner’s position, appellants are not required to provide, “convincing evidence on the
record that the use of the pH 9.6 as claimed would provide an unusual or unexpected
results over that of 9.5 in Katz,” Answer, page 5, until such time as a prima facie case of
obviousness has been established.
Based upon the above analysis, we have determined that the examiner’s legal
conclusion of obviousness is not supported by the facts. “Where the legal conclusion is
not supported by [the] facts[,] it cannot stand.” In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 178 (CCPA 1967).
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