Appeal 2007-1118
Application 10/237,089
properties ... that the prior art does not have, that the prior art is so deficient
that there is no motivation to make what might otherwise appear to be
obvious changes, or any other argument ... that is pertinent.” In re Dillon,
919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed.Cir.1990) (en banc)
(citations omitted).
We cannot say that Appellants have shown that there was no
motivation to make what might otherwise appear to be obvious changes.
Appellants have not shown that there is a difference in properties that would
have been unexpected to the ordinary artisan. “In order for a showing of
‘unexpected results’ to be probative evidence of non-obviousness, it falls
upon the applicant to at least establish … that the difference actually
obtained would not have been expected by one skilled in the art at the time
of invention.” In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143
(CCPA 1973) (citations omitted). Appellants state in their Briefs that the
results are unexpected, but the comments made in the Briefs are mere
attorney argument and cannot take the place of evidence. In re Greenfield,
571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978) (arguments of
counsel cannot take the place of evidence). One of ordinary skill in the art
would have expected there would be a difference in results based on the
difference in materials in the core. One ordinary skill in the art also would
have also expected an improvement in the cycle retention of Sakashita’s
SiOx particles upon coating those particles with carbon because Umeno
discloses that the coating improves cycle retention by inhibiting expansion.
Furthermore, Appellants have presented test data for only carbon
coatings whereas the claims are not so limited. The data presented does not
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