Appeal No. 2006-0070 Παγε 7
Application No. 10/024,631
reasonable rebuttal, e.g., experiment evidence, the entire merits
of the matter are to be reweighed. In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986). In order to properly
weigh the evidence of record, the examiner must determine whether
the appellants have demonstrated that the test results relied
upon are truly unexpected and are commensurate in scope with the
degree of protection sought by the claims on appeal. In re Merck
& Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986);
In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir.
1983); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA
1972). However, the examiner has done neither in this case. See
the Answer in its entirety. Accordingly, we cannot ascertain the
propriety of the examiner’s Section 103(a) rejection of claims
28, 29, 35, 36 and 38 based on Hill, Andersen and Gudas and the
appropriateness of any new Section 103(a) rejection against
claims 1 through 22, 25 through 27, 30 through 34 and 37 based on
the teachings of Hill.
Thus, we return this application to the examiner to review
the test data at pages 25 through 31 of the specification to
determine whether the test results in question are sufficient to
rebut any prima facie case of obviousness of the subject matter
defined by all of the claims on appeal. If they do not meet the
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007