Appeal 2007-2337
Application 10/437,919
For a number of reasons, the Appellant’s evidence is inadequate to
establish nonobviousness.
It is questionable whether the results shown by this evidence are
actually unexpected. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371,
82 USPQ2d 1321, 1338 (Fed. Cir. 2007) (“[A]ny superior property must be
unexpected to be considered as evidence of non-obviousness”). This is
because the examples in the Specification exhibit very few combinations and
very few types of aromatic ester polyol, hydroxyl containing polyol,
diisocyanate, and chain extenders. The Specification contains examples of
50:50 parts by weight and 25:75 parts by weight for the polyols. The
Appellant also has not explained why these relatively few examples are
sufficient to support the wide range of 80:20 parts by weight to 20:80 parts
by weight for the polyols required by the claimed invention. Consequently,
it is unclear whether the alleged superior results displayed are due to the use
of the specified components in the claimed amounts.
The Appellant has also not indicated which of the examples are
considered to be representative of the cited prior art.
Claims 11 and 24 encompass the use of numerous aromatic ester
polyols in addition to numerous diisocyanates in varying parts by weight of
the polyols. As a consequence, even if the examples in the Specification
were assumed to show unexpected results, the showing would be inadequate
to overcome the Examiner's prima facie case of obviousness because it is not
commensurate in scope with the claimed range. See In re Peterson,
315 F.3d 1325, 1329, 65 USPQ2d 1379, 1383 (Fed. Cir. 2003) and In re
Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983).
5
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013