Imagine yourself sitting in a courtroom, watching a murder trial.
The Prosecutor calls up a forensic "expert" to examine the blood trail, the collections of carpet fibers and to offer an expert opinion on how obvious it is that the Defendant did it. With that damning testimony in place, the Prosecution rests.
Now the Judge calls upon defense counsel. "You may call your first witness."
"We have no witnesses to call," the lawyer confesses. "We believe that overwhelming evidence and arguments are already in place for us to easily win the case. The Defense rests your Honor."
You rub your eyes. What? No witnesses? No testimony on behalf of the accused? Boy, this poor bastard is going to fry. What kind of self-proclaimed lawyer fails to mount a defense?
On very rare occasions the answer might be, a very clever one. However, in most cases, the lawyer would be a fool to not call up an expert of his own to counter what the other side's alleged expert found to be "obvious".
Time to de-suspend your not too suspended disbelief. This after all is a patent blog. So "obviously" we are not going to be talking about murder trials. But how about appeals in front of the USPTO's BOPAI? How often does the defense fail to call up an expert witness in rebuttal against what the PTO's "expert" (a.k.a the Examiner) found to be "obvious"? Answer: All too often.
Here is a case in point. The BOPAI rules as follows.
For the foregoing reasons and those stated in the Answer, we determine that the Examiner has established a prima facie case of obviousness in view of the reference evidence. Appellant has argued that unexpected results have been demonstrated. Therefore, we begin anew and consider the [totality of the record] evidence for and against obviousness. See In re Oetiker, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We do not find Appellant’s "evidence" persuasive for the following reasons. Expected beneficial results are evidence of obviousness, just as unexpected beneficial results are evidence of unobviousness. See In re Skoll, 187 USPQ 481, 484 (CCPA 1975); In re Skoner, 186 USPQ 80, 82 (CCPA 1975). Here [we find that the] Gleave [reference] teaches that improved results will occur by substituting the VAC thickener for a conventional PMM thickener (see factual finding (7) listed above). Additionally, Appellant’s "evidence" of nonobviousness that is not commensurate in scope with its claims cannot overcome the rejection of those claims. See In re Boesch, 205 USPQ 215, 219 (CCPA 1980) ... [rest of 103 affirmance is here.]
Now you might say to yourself, this is an aberration, not the norm. Actually, I took a quick sampling of several 103 affirmance cases decided in early April 2007 and found the same pattern repeated again and again. Look also here and here and here and here.