Appeal No. 2007-0175 Page 9
Application No. 10/467,134
emphasize the difference between the method taught by the combination of Vion
and Binot (which, at best, teaches the removal of grease by the combination of
flotation and coagulation/flocculation), and appellant’s claimed invention which
requires that the water or wastewater is not subjected to a flotation degreasing
means. Therefore, it is our opinion that the evidence of record fails to support
the examiner’s assertion (Final Rejection, page 3) that it is simply a matter of
optimizing the combined teachings of Binot and Vion to eliminate at least 20% of
the hexane extractable material (e.g., grease), without subjecting the water or
wastewater to flotation degreasing means. While Vion teaches that grease may
be removed with the floc, there is no suggestion in either Binot or Vion that a
water or wastewater treatment process can be performed without subjecting the
water or wastewater to flotation degreasing means, or that at least 20% of the
hexane extractable material could be eliminated from the water or wastewater
without the use of a flotation degreasing means.
On reflection, after considering all the evidence of record for what it fairly
teaches a person of ordinary skill in the art, we find that the examiner failed to
meet his burden2 of providing the evidence necessary to establish a prima facie
case of obviousness. If the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Accordingly, we reverse the rejection of
claims 18-20 under 35 USC §103(a) as being unpatentable over the combination
of Binot and Vion.
2 The initial burden of presenting a prima facie case of obviousness rests on the examiner. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
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