Appeal No. 2006-0070 Παγε 6
Application No. 10/024,631
F.2d at 587-88, 172 USPQ at 526. The fact that Hill “discloses a
multitude of effective combinations does not render any
particular formulation less obvious.” Merck & Co. Inc. v.
Biocraft Labs. Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846
(Fed. Cir. 1989). Thus, based on the fact findings set forth
above and in the Answer, we determine that Hill would have
rendered the subject matter defined by claims 1 through 22, 25
through 27, 30 through 34 and 37 prima facie obvious within the
meaning of 35 U.S.C. § 103(a).
The examiner has also determined that the combined
disclosures of Hill, Andersen and Gudas would have rendered the
subject matter defined by claims 28, 29, 35, 36 and 38 prima
facie obvious within the meaning of 35 U.S.C. § 103(a). However,
as is apparent from the Answer, the examiner has not addressed,
inter alia, the rebuttal evidence relied upon by the appellants
at page 7 the Reply Brief. According to the appellants (Reply
Brief, page 7), the test results on pages 25 through 31 of the
specification demonstrate that the claimed subject matter imparts
unexpected results, thereby rebutting any prima facie case of
obviousness established by the examiner.
It is well established that if a prima facie case is made in
the first instance, and if the appellants come forward with
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007