Appeal No. 2003-1561 Page 13
Application No. 09/632,840
establish that the two lines of appellants’ specification
referred to by the examiner represent a clear admission by
appellants that the feeding of prior art chewing gums to animals
was prior art to appellants. Indeed, appellants assert that
portion of their specification relied upon by the examiner does
not support the supposition that “it is well known to give human
chewing gums to animals” (brief, page 13). In a situation such
as this in which there is no clear admission and appellants
challenge the Examiner’s finding of an admission, the burden is
on the examiner to show that the knowledge was in fact in the
prior art.
This is so since the examiner bears the initial burden of
presenting a prima facie case of unpatentability. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Where the specification clearly designates something as prior
art, it is permissible to use that information in the
determination of obviousness. In re Nomiya, 509 F.2d 566, 571-
72, 184 USPQ 607, 612 (CCPA 1975). However, we must be ever
alert not to read obviousness into an invention on the basis of
appellants’ own statements; that is, we must view the prior art
without reading into that art appellants’ teachings. See In re
Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969).
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