Appeal 2007-1082
Application 10/327,383
1 intended purpose in combination with a spreader and a tamper and screed);
2 Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976) (the involved patent
3 simply arranges old elements with each performing the same function it had
4 been known to perform); Dunbar v. Myers, 4 Otto (94 U.S.) 187, 195 (1876)
5 (ordinary mechanics know how to use bolts, rivets and screws and it is
6 obvious that any one knowing how to use such devices would know how to
7 arranged a deflecting plate at one side of a circular saw which had such a
8 device properly arranged on the other side).
9 An inventor must show that the results the inventor says the inventor
10 achieves with the invention are actually obtained with the invention and it is
11 not enough to show results are obtained which differ from those obtained in
12 the prior art—any difference must be shown to be an unexpected difference.
13 In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). See
14 also In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed.
15 Cir. 1997) (party asserting unexpected results has the burden of proving that
16 the results are unexpected).
17 A showing of unexpected results generally must be commensurate in
18 scope with the breadth of the claimed invention. In re Greenfield, 571 F.2d
19 1185, 1189, 197 USPQ 227, 230 (CCPA 1978). See also In re Harris, 409
20 F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir. 2005).
21 Where, as here, the claimed and prior art products are identical or
22 substantially identical, or are produced by identical or substantially identical
23 processes, the PTO can require an applicant to prove that the prior art
24 products do not necessarily or inherently possess the characteristics of his
25 claimed product. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
13
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