Appeal No. 1999-1415
Application 08/784,875
19 through 222 under 35 U.S.C. § 103(a) over Tate et al. (Tate) in view of Bock et. al. (Bock).3
The same ground of rejection involving the same claims was affirmed by a prior merits
panel of this Board in Appeal No. 94-0150 in grandparent application 07/837,299.4,5 In the
present appeal, appellants admit that a prima facie case of obviousness has been established and
in rebuttal, rely on the evidence of record, addressing the issues raised by the prior panel with
respect to whether the evidence demonstrates unexpected results (see above note 4; original
decision, pages 8-9; decision on reconsideration, pages 2-5).
Accordingly, we again evaluate all of the evidence of obviousness and nonobviousness
based on the record as a whole, giving due consideration to the weight of appellants’ arguments
with respect to the evidence of record. See generally, In re Johnson, 747 F.2d 1456, 1460,
223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The evidence of record relied on by appellants is the Examples and Comparative
Examples in the specification; the declaration executed March 20, 1980 by appellant Pedain
(Pedain declaration) that was submitted by the common assignee in the prosecution of
application serial Number 69,412, filed August 24, 1979, which matured into Bock;6 and the
translation of a passage from Römpp Chemie Lexicon.7
We find that Comparative Example 5 represents the closest prior art, as appellants
contend (brief, page 6; first reply brief, page 2), but for the reason that it is representative of the
2 These claims are all of the claims in the application, even though the examiner states that the
ground of rejection involves “Claims 1-22” (answer, page 2). See the appendix to the brief.
3 Answer, pages 3-5.
4 Original decision entered October 31, 1995 (Paper No. 15); decision on request for
reconsideration entered January 30, 1996 (Paper No. 17).
5 The ground of rejection involving essentially the same claimed subject matter was also
affirmed by another merits panel in Appeal No. 91-0137 in great grandparent application
07/311,920, filed February 16, 1989 (original decision entered September 30, 1991 (Paper No.
13); decision on request for reconsideration entered January 15, 1992 (Paper No. 15)).
6 The Pedain declaration was filed in the present application with the brief.
7 The translation was filed with the brief. The citation provided by appellants on the translation
is “CD Römpp Chemie Lexicon – Version 1.0, Stuttgart/New York: Georg Thieme Publishing
House 199[sic].”
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