In re Dillon cited against appellant in obviousness-type double patenting case

Ex parte NOBUHIRO YABUNOUCHI

Dillon is cited in an obviousness type double-patenting case:



We are not persuaded by Appellants’ argument. The Federal Circuit
has ruled that:

In brief, the cases establish that if an examiner considers
that he has found prior art close enough to the claimed
invention to give one skilled in the relevant chemical art the
motivation to make close relatives (homologs, analogs, isomers,
etc.) of the prior art compound(s), then there arises what has
been called a presumption of obviousness or a prima facie case
of obviousness. In re Henze, 181 F.2d 196, 37 C.C.P.A. 1009,
85 USPQ 261, (C.C.P.A. 1950); In re Hass, 141 F.2d 122, 127,
130, 31 C.C.P.A. 895, 60 USPQ 544, 548, 552 (C.C.P.A. 1944).
The burden then shifts to the applicant, who then can present
arguments and/or data to show that what appears to be obvious,
is not in fact that, when the invention is looked at as a whole.
In re Papesch, 315 F.2d 381, 50 C.C.P.A. 1084, 137 USPQ 43
(C.C.P.A. 1963). The cases of Hass and Henze established the
rule that, unless an applicant showed that the prior art
compound lacked the property or advantage asserted for the
claimed compound, the presumption of unpatentability was not
overcome.

In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990).