Appeal No. 2003-2023
Application 09/581,440
the herbicidal art would have been motivated to make the modifications of the prior art salts
necessary to arrive at the claimed . . . salt.”); In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d
1897, 1901 (Fed. Cir. 1990)(in banc) (“This court . . . reaffirms that structural similarity between
claimed and prior art subject matter, proved by combining references or otherwise, where the
prior art gives reason or motivation to make the claimed compositions, creates a prima facie case
of obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that
prima facie case.”); In re Grabiak, 769 F.2d 729, 731-32, 226 USPQ 870, 872 (Fed. Cir. 1985)
(“[W]e have concluded that generalizations should be avoided insofar as specific chemical
structures are alleged to be prima facie obvious one from the other. . . . [I]n the case before us
there must be adequate support in the prior art for the ester/thioester change in structure, in order
to complete the PTO’s prima facie case and shift the burden of going forward to the applicant.”)
Accordingly, on this record, the examiner has not presented scientific reasoning and/or
objective evidence which establishes that one of ordinary skill in this art would have reasonably
expected that perfluorobutyl methyl and ether ethers would have similar properties with respect
to the formation of azeotrope-like compositions, and thus, would have expected that any organic
solvent used with one ether would also be useful with the other ether to form such a composition,
and thus has not provided the necessary factual foundation to establish a prima facie case of
obviousness. Therefore, in the absence of a prima facie case of obviousness, we reverse the
ground of rejection under § 103(a).
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