Appeal 2007-2236
Application 10/991,738
1 An inventor must show that the results said to be achieved with the
2 invention are actually obtained. It is not enough to show that results are
3 obtained which differ from those obtained in the prior art—any difference
4 must be shown to be an unexpected difference. In re Klosak, 455 F.2d 1077,
5 1080, 173 USPQ 14, 16 (CCPA 1972). See also In re Geisler, 116 F.3d
6 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (party asserting
7 unexpected results has the burden of proving that the results are
8 unexpected).
9 The showing must be clear and convincing. McClain v. Ortmayer,
10 141 U.S. 419, 429 1891) (conclusive evidence need to show invention
11 performs some new and important function not performed by the prior art);
12 In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966)
13 (applicant required to submit clear and convincing evidence to support an
14 allegation of unexpected property). See also In re Passal, 426 F.2d 409,
15 412, 165 USPQ 702, 704 (CCPA 1970) and In re Lohr, 317 F.2d 388, 392,
16 137 USPQ 548, 550-51 (1963) (conclusive proof of unexpected results not
17 submitted by applicant).
18 On this record, we are not certain of the precise significant of Rupich's
19 critical current density limitation. For example, is Rupich the first to obtain
20 the claimed critical current densities? What difference does critical current
21 temperature make? Would one skilled in the art view the results as unusual
22 and unexpected? If Rupich is first to obtain the claimed "high" critical
23 current densities and if those high critical current densities are unexpected,
24 then perhaps Rupich has a patentable invention. Cf. United States v. Adams,
25 383 U.S. 39 (1966); Eibel Process Co. v. Minnesota & Ontario Paper Co.,
17
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