Appeal No. 2005-2753
Application No. 09/730,238
The first alleged exceptional issue of importance is that our opinion did not discuss or
distinguish the Federal Circuit cases cited by appellant, but, instead, cited other, many older,
Federal Circuit cases than those cited by appellant.
The second alleged exceptional issue of importance is that our decision did not
discuss or support the element of a reasonable expectation of success as an important element
of a prima facie case of obviousness.
While we do not necessarily agree that these are “exceptional” issues of importance,
we grant appellant’s request for an expanded panel to elucidate on our reasoning.
Appellant requests rehearing of all thirteen grounds of rejection. These grounds of
rejection are listed at page 3 of our decision of November 22, 2005, and are also listed on
pages 8-9 of the principal brief of March 11, 2005.
In particular, appellant asserts that our opinion overlooked or misapprehended the
following four points:
A. Our opinion did not address the Federal Circuit cases cited by appellant of In re
Zurko, 258 F.3d 1379, 59 USPQ2d 1693 (Fed. Cir. 2001); In re Vaeck, 947 F.2d 488, 20
USPQ2d 1438 (Fed. Cir. 1991); In re Lee, 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir. 2002);
In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999); In re Rouffet, 149 F.3d
1350, 47 USPQ2d 1453 (Fed. Cir. 1998); and In re Kotzab, 217 F. 3d 1365, 55 USPQ2d
1313 (Fed. Cir. 2000) but provides another list of cases to support our analysis, with all but
one of those listed cases older than the cases cited by appellant.
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