## Facts

- Verne R. Rinehart sought a patent on a process for producing commercial-scale quantities of polymeric ethylene terephthalate (PET) resin.
- The claimed process used (among other conditions) a preformed low-molecular-weight polyester solvent, superatmospheric pressure, and a specified low glycol-to-acid molar ratio to produce a low–degree of polymerization resin suitable for further polymerization.
- The examiner rejected claims 1–9 as obvious under 35 U.S.C. § 103 over two references:
  - Pengilly: PET production using a preformed polyester solvent at about atmospheric pressure.
  - Munro: PET production at elevated pressure without the preformed solvent.
- Rinehart submitted an affidavit asserting unexpected results, describing scale-up failures in the individual prior-art approaches (e.g., long reaction times for Pengilly at scale and frozen polymer/lumping problems for Munro at scale) and asserting that the claimed combination avoided those difficulties.
- The Board of Appeals affirmed the § 103 rejection, discounting the affidavit as merely relating to nonpatentable differences of degree associated with “commercial scale” optimization.

## Issues

1. Whether the PTO could sustain a § 103 obviousness rejection after the applicant submitted affidavit evidence of unexpected results, while largely dismissing that evidence as mere scale-related optimization.
2. Whether, once an applicant rebuts a prima facie case of obviousness with objective evidence, the PTO must meaningfully evaluate and respond to that evidence rather than rely on conclusory assertions that the prior art suggests the claimed combination.

## Decision

- The C.C.P.A. reversed the Board’s decision and set aside the § 103 rejection of claims 1–9.
- The court accepted that the PTO had articulated an initial prima facie case based on combining Pengilly and Munro.
- The court held the Board erred by failing to give full and fair consideration to the affidavit evidence of unexpected results tied to commercial-scale operability.
- Because the PTO did not adequately rebut or undermine the affidavit evidence, the conclusion of obviousness could not be sustained on the record.

## Legal Principles

- Obviousness under § 103 must be determined on the entire evidentiary record; objective indicia (secondary considerations) are part of that inquiry.
- After an applicant introduces evidence sufficient to rebut a prima facie case of obviousness (e.g., unexpected results), the PTO must weigh that evidence against the prior art and may not dismiss it with unsubstantiated, conclusory statements.
- Evidence that a claimed combination resolves practical failures of the prior art in commercial-scale operation can be probative of nonobviousness when it is credible and commensurate with the scope of the claims.

## Conclusion

The C.C.P.A. held that the PTO cannot maintain an obviousness rejection by treating commercial-scale success as mere optimization while disregarding credible, unrebutted evidence of unexpected results; the PTO must evaluate and respond to such evidence as part of the overall § 103 analysis.


Application of Rinehart, 531 F.2d 1048 (C.C.P.A. 1976)