Appeal No. 2006-1792
Application 10/329,665
Finally, appellants have not carried their burden of submitting an explanation or evidence
establishing the practical significance of the “surprising results” relied on vis-à-vis the teachings
of the applied references and why the results would have been considered unexpected by one of
ordinary skill in this art. See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
1365-66 (Fed. Cir. 1997); In re Merck, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir.
1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Lindner,
457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); In re Klosak, 455 F.2d 1077, 1080,
173 USPQ 14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306
(1971). Indeed, one of ordinary skill in this art would have recognized that boric acid and zinc
borate contain and lose water differently, and thus it is not apparent on this record that the results
reported by Appellants are more than the results reasonably expected by this person from the use
of zinc borate in place of boric acid.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of the admitted prior art,
Whelan, Russell, Lyday, Brownell, Duryea, Nanaumi and Yasuma with appellants’
countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1 through 3 and 5 through 35 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv) (2005).
AFFIRMED
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