Appeal No. 2006-1506 Page 5
Application No. 10/858,576
claimed subject matter. Rather, appellants focus on alleged1
unexpected results for the claimed subject matter in arguing
against the obviousness determination of the examiner.
Appellants maintain that the specification Examples 1 and 2
establish unexpected results for the claimed adhesive product
over the adhesive products of the applied references. We note
that the question as to whether unexpected advantages have been
demonstrated is a factual question. In re Johnson, 747 F.2d
1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984). It is
incumbent upon appellants to supply the factual basis to rebut
the prima facie case of obviousness established by the examiner.
See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972). Appellants, however, do not provide an adequate
1While the issues to be resolved in a § 102/§ 103 rejection
of a product-by-process claim are generally considered to be
substantially the same and often resolved together (see, e.g., In
re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977);
In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972));
here, appellants have separately argued the anticipation and
obviousness issues in the brief. Moreover, appellants have not
presented any arguments contesting the presentation of a prima
facie case of obviousness. Thus, we consider the obviousness and
anticipation rejections separately in this appeal. In this
regard, arguments that could have been made but were not
presented in the briefs are deemed to be waived. See
37 CFR § 41.37(c)(1)(vii).
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