Appeal No. 2002-0751 Page 6
Application No. 09/336,051
using liquid nitrogen, liquid air or other cryogenic cooling agent at a
pressure of from about 1 atmosphere up to about 50 atmospheres.
Pages 11-12. The specification also discloses several cryogenic grinding
apparatuses suitable for use in the disclosed process. See page 12. Thus, the
claimed process requires more than simply a step of cooling with liquid nitrogen;
the claim requires that the extruded pellets be ground while cooled under liquid
nitrogen.
The examiner argues that “one of ordinary skill in the art would have been
motivated to create a toilet rim block using the process disclosed by McDermott,
regardless of the specific order of the method steps, and the specific particle
size.” The examiner, however, has pointed to nothing in McDermott that would
have suggested the specific steps recited in the claims, in the recited order. The
examiner’s unsupported assertion is not enough to support a prima facie case of
obviousness. See In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775
(Fed. Cir. 1983) (“It is fundamental that rejections under 35 U.S.C. § 103 must be
based on evidence comprehended by the language of that section.”); In re Lee,
277 F.3d 1338, 1342, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002) (The “factual
question of motivation is material to patentability, and [must] not be resolved on
subjective belief and unknown authority.”).
Since the examiner has not shown that the cited reference would have
suggested the claimed method, we conclude that the examiner has not carried
the initial burden of showing prima facie obviousness. We therefore need not
address Appellant’s evidence of unexpected results.
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