Appeal No. 2000-0634
Application No. 08/274,942
crosslinking energy in the process/apparatus of Clark would have been obvious to one of
ordinary skill. Thus, we uphold the Examiner’s rejection of claim 5.
Because there is substantial evidence to support the Examiner’s determination of a
prima facie case of obviousness over each of the applied prior art references, the burden of
proof was properly shifted to the appellants to rebut the prima facie case by presenting
persuasive 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.”). Appellants
have not sufficiently rebutted the prima facie case of obviousness.
CONCLUSION
For the foregoing reasons and those set forth in the Answer, based on the totality of
the record, we determine that the preponderance of evidence weighs in favor of obviousness,
giving due weight to Appellants arguments. Accordingly, the Examiner’s rejections under
35 U.S.C. § 103(a) are affirmed.
The rejection of claims 1 to 4, 8 to 40, 42 to 61 and 63 to 81 under 35 U.S.C. § 103(a)
as obvious over Clark is affirmed.
The rejection of claim 5 under 35 U.S.C. § 103(a) as obvious over the combination of
Clark and Fogarty is affirmed.
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