Appeal No. 2005-0178
Application No. 10/091,502
examiner states that there is suggestion to combine the
references because the applied references are found within the
same field of endeavor and pertinent to each other because of the
battery environment disclosed in the references, this is not the
standard of a prima facie case of obviousness. In re Fine,
supra.
Also, on page 17 of the answer, the examiner shifts the
burden to appellants to show why Honbo’s negative electrode
density cannot function in a substantially similar battery
environment. This is an incorrect position taken by the
examiner. As pointed out by appellants in their reply brief, on
page 2, the burden is on the examiner to present a prima facie
case of obviousness. For the reasons discussed above, the
examiner has failed to do so.
We also note that on page 10 of the brief, appellants
discuss the examiner’s position regarding the negative electrode
density being a result effective variable. Appellants refer to
In re Antonie, 559 F.2d 618, 621, 195 USPQ 6, 9 (CCPA 1977).
This case stands for the proposition that there are exceptions to
the general rule that optimization of a result effective variable
is obvious. One exception is that the variable was not
recognized to be result effective.
At the top of page 11 of the brief, appellants argue that
the applied art discloses no range for a negative electrode
density when used with a secondary power source of the type
claimed by appellants, and of the type disclosed in Kuruma and of
the type recited in the claims of the Tsushima patents.
On page 17 of the answer, the examiner actually agrees with
appellants that the applied art fails to recognize that the
negative electrode density is a result effective variable.
Answer, page 18. The examiner, however, then concludes that the
negative electrode density does not impart criticality to the
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