Appeal No. 2006-2810 Page 12
Application No. 10/618,111
improve their properties. Smith, column 6, lines 30-40. This would have led the skilled
worker to expect that LCTs could be modified without deleteriously affecting their
structure, but instead improving it. In light of this, we do not find Appellant’s conclusory
statements credible that the addition of fillers would be expected to “ruin” the LCT
structure. Brief, page 6.
In sum, we conclude that the examiner has provided adequate evidence to
establish a case of prima facie obviousness.
A declaration was proffered by Appellant to establish unexpected results.
Declaration of James D. Smith under 37 CFR § 1.132 (hereinafter, the “Smith
Declaration”). “An applicant may rebut a prima facie case of obviousness by providing a
‘showing of facts supporting the opposite conclusion.’ Such a showing dissipates the
prima facie holding and requires the examiner to ‘consider all of the evidence anew.’
Rebuttal evidence may show, for example, that the claimed invention achieved
unexpected results relative to the prior art.” In re Kumar, 418 F.3d 1361, 1368,
76 USPQ2d 1048, 1052 (Fed. Cir. 2005) (internal citations omitted). “[I]It is well settled
that unexpected results must be established by factual evidence. ‘Mere argument or
conclusory statements in the specification does not suffice.’ In re De Blauwe, 736 F.2d
699, 705, 222 USPQ 191, 196 (Fed. Cir. 1994); see also In re Soni, 54 F.3d at 750,
34 USPQ2d at 1687.” In re Geisler, 815 F.2d 686, 1365, 43 USPQ2d 1362, 1365
(Fed. Cir. 1997). The Board has “broad discretion as to the weight to give declarations
offered in the course of prosecution.” In re American Academy of Science Tech Center,
367 F.3d 1359, 70 USPQ2d 1827 (Fed. Cir. 2004).
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