Appeal No. 2001-1160 Page 4
Application No. 08/479,977
rejection based upon Joyce and/or [Richardson] has been overcome by the
showing in the specification.” Appeal Brief, page 7. Appellants point specifically
to the test results shown in the specification’s Example 2, and argue that the
increased efficacy of the claimed combination would overcome any prima facie
case based on the examiner’s cited references. Id., pages 7-8.
The examiner did not respond to Appellants’ argument based on
unexpected results. See the Examiner’s Answer, pages 4-5.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “The patent applicant may
then attack the Examiner’s prima facie determination as improperly made out, or
the applicant may present objective evidence tending to support a conclusion of
nonobviousness.” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992).
“When prima facie obviousness is established and evidence is submitted
in rebuttal, the decision-maker must start over. . . . Prima facie obviousness is a
legal conclusion, not a fact. Facts established by rebuttal evidence must be
evaluated along with the facts on which the earlier conclusion was reached, not
against the conclusion itself. Though the tribunal must begin anew, a final finding
of obviousness may of course be reached, but such finding will rest upon
evaluation of all facts in evidence, uninfluenced by any earlier conclusion
reached . . . upon a different record.” In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). See also In re Hedges, 783 F.2d 1038, 1039,
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