Appeal No. 1999-0381
Application No. 07/776,014
noted and considered all these submissions in a communication entered January 5, 1998
(Paper No. 41).
THE REJECTION UNDER 35 U.S.C. § 103
We refer to the decision entered September 21, 1995 (Paper No. 20) for the
statement of rejection presented by the merits panel. We note that the examiner repeated
this rejection verbatim on pages 4 and 5 of the examiner’s answer.
According to appellant, “[t]he sole issue on appeal is whether the claims are
commensurate in scope with the information in the Nieh Declaration, Exhibit 1” (appeal
brief, page 2). The examiner concurs (examiner’s answer, page 2). Thus, appellant does
not contest the prima facie case of obviousness.
However, a conclusion of prima facie obviousness, of course, does not end a
patentability determination under 35 U.S.C. § 103. As stated in In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by experiment,
prior art references, or argument, the entire merits of the matter are to be
reweighed. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984).
All the evidence of nonobviousness must be carefully weighed in deciding whether a
prima facie case of obviousness has been overcome. Appellant, as the party asserting the
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