Appeal No. 2001-0937 Page ~ PAGE ~2~
Application No. 09/077,119
Spray Droplets”, Journal of Economic Entomology, Vol. 62, no. 4, 1969, pp. 919-
925). Appellants only take issue with the new grounds of rejection.
Regarding the new grounds, appellants disagree with the Board’s
determination that:
(1) a prima facie case of obviousness for the claims has been established
with respect to the Itoh and Himel disclosures; and,
(2) the Declaration of Dr. Jochen Kalbe (attached to Paper no. 10) does
“not,” as the Board stated in the Decision (page 4), “persuasively establish the
nonobviousness of applying the claimed composition at the claimed droplet sizes
because droplet size is nowhere mentioned.”
We have carefully reviewed the Declaration. In the earlier Decision, the
Board (footnote 2) stated that “[a]s best we can tell, the Declaration repeats
exactly Examples A-D set forth in the Specification at pp. 10-12.” As appellants
have shown, the Declaration is different in one important respect: the Examples
in the Declaration do in fact mention the claimed droplet sizes. This was
overlooked in rendering the earlier Decision.
After reading the Declaration in its entirety, we are now persuaded that
the Declaration presents evidence of nonobviousness for the claimed droplet
sizes. Because we now agree that appellants have “come forward with evidence
of nonobviousness to overcome the prima facie case,” In re Huang, 100 F.3d
135, 139, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996), we need not address
appellants’ arguments on whether the new grounds of rejection establish a prima
facie case of obviousness.
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