Appeal No. 2002-1618
Application No. 09/051,746
In our view, appellants have placed evidence of record which controverts any
such “analogy” which may have been put forth by the examiner. Note, Paper No. 12,
pages 4-5, where appellants provide a detailed explanation of Advances in Fluoride
Chemistry, Vol. 3, p. 180-183, 200-209, previously made of record. See also, Brief,
page 9. We also agree with appellants that the examiner has not come to grips with or
rebutted this argument. See, Answer, page 5.
In view of the above, we find the examiner has failed to present sufficient
evidence to support a prima facie case of obviousness.
After evidence or argument is submitted by the applicants in response to an
obviousness rejection, "patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of the argument."
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); see In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787 (Fed. Cir. 1984) ("All evidence
on the question of obviousness must be considered, both that supporting and that
rebutting the prima facie case."). On balance, we believe that the totality of the
evidence presented by the examiner and appellants weighs in favor of finding the
claimed invention non-obvious. The rejection is reversed.
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