Appeal 2007-0185
Application 10/305,281
It is well settled that there must be “clear and convincing evidence” of
unobvious results in order to overcome a prima facie case of obviousness. In re
Lohr, 317 F.2d 388, 392, 137 USPQ 548, 550-51 (CCPA 1963). In addition, the
presentation of objective evidence of nonobviousness does not, in and of itself,
mandate a conclusion of nonobviousness. The fact finder here, the Examiner, is
entitled to his own ideas, within reason, as to what evidentiary facts will persuade
him of unexpected results. Thus, whether the rebuttal evidence is sufficient to
persuade the Examiner is an evidentiary matter left, within reason, to the trier of
fact. In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
We do not find Appellants’ evidence presented in the graph of Example 1, to be
fully comparative and thus Appellants’ evidence does not mandate a conclusion of
nonobviousness.
While “discovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art,” In re Boesch, 617 F.2d 272,
276, 205 USPQ 215, 219 (CCPA 1980), our reviewing court has found an
exception to this general rule where “the parameter optimized was not recognized
to be a result-effective variable,” In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8-
9 (CCPA 1977). It is clear from appellant's data, that the result of lowering
cholesterol is dependent upon the amount of pravastatin administered. However,
we agree with the Examiner that the data before us indicates that one of ordinary
skill in the art would have recognized that when the amount of pravastatin is
increased, the expected benefit would be a further reduction in cholesterol levels.
As indicated herein, we do not find Appellants’ data convincingly overcomes the
Examiner's prima facie case of obviousness.
In view of the above data discrepancies noted by the Examiner, we affirm
the Examiner's prima facie case of obviousness.
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