Appeal No. 2001-1234
Application 08/658,983
The examiner has the initial burden of establishing a prima facie
case of obviousness. See In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976). Unless the examiner
has established a prima facie case of obviousness, the appellants
need not provide any results.
The examiner does not explain how the applied prior art
itself would have fairly suggested the appellants’ claimed
invention to one of ordinary skill in the art. See In Rinehart,
531 F.2d at 1051, 189 USPQ at 147. Instead, the examiner merely
relies upon a per se rule that the order of addition of reactants
is not crucial. As stated by the Federal Circuit in In re
Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir.
1995), “reliance on per se rules of obviousness is legally
incorrect and must cease.” Moreover, because GB ‘524 discloses
adding the bromine and the molten aromatic compound in parallel
(page 1, lines 30-33), the order of addition of the reactants is
not an issue in this case. Therefore, the per se rule relied
upon by the examiner is irrelevant. The relevant issue regarding
claim 50, the sole independent claim, is whether the applied
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