Appeal No. 2005-0407
Application No. 09/888,246
the brominated product, the skilled artisan would have the
reasonable expectation that the prior art wet cake treated as
taught by Mack would have low amounts of occluded free bromine
content even though the amount is not disclosed by the reference”
(answer, pages 5-6). That argument is not well taken because the
examiner has not shown that those of ordinary skill in the art
knew that the color of a wet brominated diphenylalkane cake
evidences its occluded free bromine content or that Mack’s
treatments are effective for reducing the occluded free bromine
of such a cake to a value within the appellants’ recited range.
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the appellants’ claimed invention.5
5 Thus, the appellants need not provide objective evidence
of nonobviousness such as the examiner’s proposed comparison of
Mack’s treated wet cake with the appellants’ claimed wet cake
(answer, page 5). See In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 882 (CCPA 1981).
6
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