Appeal No. 97-2486
Application No. 08/308,983
Moreover, such results are nothing more than would be
expected. It is well settled that expected beneficial results
are evidence of obviousness of a claimed invention, just as
unexpected beneficial results are evidence of nonobviousness.
See, e.g., Ex parte Novak, 16 USPQ2d 2041, 2043 (Bd. Pat. App.
& Int. 1989), aff'd mem. 899 F.2d 1228, 16 USPQ2d 2043 (Fed.
Cir. 1990).
In view of the foregoing, we will sustain the rejection
of claim 37 under 35 U.S.C. § 103 based on the combined
teachings of Eggers and Horton.
We consider next the rejection of claims 38 and 39 under
35 U.S.C. § 103 as being unpatentable over Eggers in view of
Horton. With respect to claim 38, for reasons stated infra in
our new rejection under the provisions of 37 CFR 1.196(b), we
are of the opinion that this claim fails to satisfy the
requirements of 35 U.S.C. § 112, second paragraph. Normally a
claim which fails to comply with the second paragraph of § 112
will not be analyzed as to whether it is patentable over the
prior art since to do so would of necessity require
speculation with regard to the metes and bounds of the claimed
subject matter. See In re Steele, 305 F.2d 859, 862-63, 134
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