Obviousness reversed in Ex parte Bayer
During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner’s mere conclusory statements are not sufficient to support the prima facie case of obviousness. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
On the present record, the Examiner has failed to meet the initial burden of establishing a prima facie case of obviousness. See Oetiker, 977 F.2d at 1445; In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
On the panel was ALJ GEORGE C. BEST, a CalTech chemistry Ph.D. and UCLaw grad.