Appeal No. 2001-0597
Application 08/564,513
Billig’s use of the term “nickel” encompasses, or would render
obvious, the use of zero valent nickel.
Accordingly, we conclude that the examiner has failed
to establish a prima facie case of obviousness and the rejection
is reversed.2
2 As evidence of nonobviousness, appellants reference related
Patent Application Serial No. 08/424,351, filed April 26, 1995
(Appeal Brief, page 6) as well as pages from a book by J.P.
Collman, Principles and Applications of Organotransition Metal
Chemistry (1987) (Appeal Brief, page 7). Appellants are reminded
that 37 CFR § 1.195 provides that exhibits submitted after a case
has been appealed will not be admitted without a showing of good
and sufficient reasons why they were not earlier presented. In
this regard, we note that the examiner was not required to
consider the evidence submitted with appellants’ brief. In any
event, having found that the examiner has failed to establish a
prima facie case of obviousness, we need not consider appellants’
evidence. See In re Fine, 837 F.2d 1071, 1076, 5 USPQ2d 1596,
1600 (Fed. Cir. 1988).
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