Appeal No. 2001-0971 Page 3
Application No. 08/256,736
reaction even at the temperatures used in the prior art, so one of ordinary skill in
the art would not have had any reason to expect success even if there were
motivation to lower the temperature of the reaction,” id. at 10.
The burden is on the examiner to make a prima facie case of
obviousness, and the examiner may meet this burden by demonstrating that the
prior art would lead the ordinary artisan to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). The findings of fact underlying
the obviousness rejection, as well as the conclusions of law, must be made in
accordance with the Administrative Procedure Act, 5 U.S.C. 706 (A), (E) (1994).
See Zurko v. Dickinson, 527 U.S. 150, 158, 119 S.Ct. 1816, 1821,
50 USPQ2d 1930, 1934 (1999). Findings of fact underlying the obviousness
rejection upon review by the Court of Appeals for the Federal Circuit, our
reviewing court, must be supported by substantial evidence within the record.
See In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775
(Fed. Cir. 2000). In addition, in order for meaningful appellate review to occur,
the examiner must present a full and reasoned explanation of the rejection.
See, e.g., In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1432 (Fed. Cir.
2002).
The rejection before us on review does not meet the above criteria. The
claims require that the esterification be performed at a temperature ranging from
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