Appeal No. 2003-0819
Application No. 09/872,928
under 35 U.S.C. § 103, both the suggestion to combine the
references and the reasonable expectation of success are founded
in the prior art, not in the appellants’ own disclosure. In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991)(citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988)).
Once a prima facie case of obviousness is established, the
burden of going forward with persuasive argument or evidence
(e.g., unexpected results) is on the applicant. In re Mayne,
104 F.3d 1339, 1343, 41 USPQ2d 1451, 1455 (Fed. Cir. 1997)
(“With a factual foundation for its prima facie case of
obviousness shown, the burden shifts to applicants to
demonstrate that their claimed fusion proteins possess an
unexpected property over the prior art.”). The question as to
whether unexpected advantages have been demonstrated is a
factual question. Id. (citing In re Johnson, 747 F.2d 1456,
1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984)). Thus, it is
incumbent upon the appellants to supply the factual basis to
rebut the prima facie case of obviousness established by the
examiner. See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173
USPQ 14, 16 (CCPA 1972).
The appellants argue that “[o]mission of the HALS compounds
[i.e., 1-oxa-3-oxo-4,8-diazo-spiro[4,5]decane light
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