Appeal 2007-0124
Application 10/273,836
slight variation is permissible in either direction,4 we determine that
Malcolm suggests application temperatures slightly below 121ºC, i.e.,
including values less than 120ºC.
Appellants argue that “non-obviousness” of the invention over the
disclosure of Ryan is clear from the results set forth in Table 2 of the
Specification (Br. 5). However, the burden of explaining unexpected results,
as well as establishing that the comparison is with the closest prior art and
commensurate in scope with the claimed subject matter, rests with
Appellants. See In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972); and Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App.
& Int. 1992). Here, we determine that Appellants have merely referred us to
Table 2 in the Specification without any explanation, and, thus, Appellants
have not met their burden.
We agree with the Examiner that Ryan describes hot melt adhesive
formulations within the scope of the claims on appeal, and Appellants have
merely chosen to describe their invention in terms of certain physical
characteristics that do not appear in Ryan or Malcolm (see Malcolm, col. 4,
l. 64-col. 5, l. 4). However, merely describing the inventive formulation in
terms of different physical characteristics than the prior art does not render
the formulation patentable. See In re Spada, 911 F.2d 705, 708,
4 See In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1936 (Fed.
Cir. 1990) (a concentration of “about 1-5%” does allow for concentrations
slightly above 5%).
5
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