Appeal No. 2004-1590
Application No. 10/009,699
Handrick. The examiner then states that where there are any
differences between (1) the nitric acid concentration, and (2)
molar ratio of nitric acid to aromatic compound, such differences
are deemed obvious unless there is evidence indicating such
concentration is critical, and cites In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955). Answer, page 4. We cannot
find in the answer, any rebuttal by the examiner regarding
appellants’ discussion of the maximum weight ratio of nitric acid
to substrate of 37:1, as compared with the ratio of at least
50:1, as set forth in Handrick.
The initial burden of presenting a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In the instant
case, the examiner has not explained how Handrick’s ratio values
(regarding nitric acid to substrate) in fact overlap that claimed
by appellants. The examiner refers to column 3, lines 52-56 of
Handrick, but does not explain how such disclosure teaches an
overlap of the ratio required by claim 11.
With regard to the concentration of nitric acid, the
examiner again relies upon the disclosure at column 3, lines 52-
56 of Handrick, but does not explain how the disclosure teaches
an overlap of the concentration of the values set forth in claim
11.
In view of the above, we determine that the examiner has
incorrectly applied the rationale in In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955). While it may ordinarily be
the case that the determination of optimum values for the
parameters of a prior art process would be at least prima facie
obvious, that conclusion depends upon what the prior art
discloses with respect to those parameters. See In re Anthonie,
559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977). Compare In re
Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972)(“Where, as
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