Appeal No. 2005-2753
Application No. 09/730,238
B. Our opinion did not discuss appellant’s argument that the rejections did not cite
evidence of a reasonable expectation of success and that this is a relevant factor in
determining whether a prima facie case of obviousness has been established.
C. While there are thirteen different grounds of rejection to be reviewed on appeal,
our opinion addressed only the first six grounds separately, dismissing the last seven grounds
in a single paragraph. Appellant asserts that since the brief referred to each separate ground
of rejection, so must our opinion.
D. Our opinion misapprehended appellant’s argument that there is no clear and
particular evidence of a suggestion or motivation to form the proposed combinations of
references.
We will respond to these four points in the order listed by appellant. Points A and B
correspond to the two issues which appellant submits to be issues of exceptional importance
justifying review by an expanded panel.
A.
An allegation that certain cited Federal Circuit cases are newer than others does not
refute the viability of the cases cited in our decision. We note that appellant does not assert
that any of the decisions in the cases cited in our opinion have been overruled or that we have
cited case law that does not apply.
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