Appeal 2007-1033
Application 10/091,061
1688 (Fed. Cir. 1995)).) Soni does not support the proposition that
unsupported or conclusory statements are sufficient to overcome a prima
facie case of obviousness. See Soni, 54 F.3d at 750, 34 USPQ2d at 1687
(quoting, e.g., In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984) (“‘Mere argument or conclusory statements . . . does not
suffice.’”)). In essence, the majority’s broad reading of Soni would put into
place a “new rule” that would permit an applicant to overcome a prima facie
case by merely showing “‘substantially improved results’” and stating that
the results were “‘unexpected.’” Soni, 54 F.3d at 755, 34 USPQ2d at 1691-
92 (Michel, J., dissenting) (quoting 54 F.3d at 751, 34 USPQ2d at 1688) (the
same language quoted and relied upon by the majority (supra p. 6)). Such a
test would “eliminate[] the applicant’s burden of coming forward with
objective evidence of unexpectedness” and “may be inherently unworkable.”
Id., 34 USPQ2d at 1692 (Michel, J., dissenting).
Further, in Soni, the issue of whether the data were commensurate in
scope with the claims was raised for the first time on appeal, and the court
refused to consider it. Id. at 751, 34 USPQ2d at 1688.
Appellant has claimed a method reciting the combination of two prior
art compounds known to be useful in treating cancer for that “very same
purpose.” (Answer 7.) Given this situation, the majority properly found the
Examiner had made a prima facie case of obviousness. The majority also
properly found “there would have been a reasonable expectation that
administering capecitabine in combination with Compound 1 would provide
a greater anti-cancer effect than would administering either capecitabine or
Compound 1 alone” (see supra p.5). Yet the majority decision will likely
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