Appeal No. 2005-1629
Application No. 10/001,256
composition cannot be the basis for patentability. See In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
With regard to issue IV, appellants argue that the two findings raised by the
Board with respect to the evidence “were not raised in the prosecution of this application
or in the Examiner’s Answer and thus constitute new ground(s) for rejection” (Request,
page 7, citing In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed. Cir. 1995)).
This argument is not persuasive for several reasons. First, we note that the examiner’s
reliance on the finding that the improved results would have been expected from the
teachings of Sano alone would be sufficient to rebut appellants’ showing of evidence.
See In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975)(Decision, page
9). Secondly, the burden is on appellants to establish that the submitted comparative
evidence is commensurate in scope with the claimed subject matter, the comparison is
with the closest prior art, and there is only one variable whose cause and effect is
sought to be shown. See In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA
1972); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Int. 1992).
Whether or not the examiner finds that the comparative evidence is not persuasive for
any reason, the appellants still have the burden of establishing that the showing is with
the closest prior art, commensurate in scope with the subject matter sought to be
patented, and that the results are truly unexpected. Appellants have had ample
opportunity to meet this burden. Third, the citation of In re Soni is not controlling here
since the court in Soni held that new rationales or arguments cannot be made on appeal
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