Appeal 2007-4101
Application 09/962,972
At pages 13 and 14 of the Brief, the Appellants refer to the Schlegel
Declaration and Specification Example 2 to rebut the prima facie case
established by the Examiner. According to the Appellants, the Schlegel
Declaration and Specification Example 2 show that the claimed subject
matter imparts unexpected results (id). Under the current circumstances, we
are not convinced that the Appellants have carried the burden of showing
unexpected results. In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687
(Fed. Cir. 1995) (Appellants have the burden of rebutting a prima facie case
of obviousness); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972)(“the burden of showing unexpected results rests on a party
who asserts them”).
Initially, we note that the Appellants have not supplied a copy of the
Schlegel Declaration in the Evidence Appendix section of the Brief as
required by 37 C.F.R. § 41.37(c)(viii) (2004). In fact, as noted above, the
Appellants have indicated “none” at the Evidence Appendix section of the
Brief for the evidence relied upon in the Brief. Accordingly, we need not
consider the Schlegel Declaration not provided by the Appellants.
Even if we were to consider the Schlegel Declaration, we are not
convinced that the Schlegel Declaration and Specification Example 2 would
be sufficient to rebut the prima facie case of obviousness. Contrary to the
Appellants’ arguments at pages 13 and 14 of the Brief, for example, the
Schlegel Declaration does not show preparing Klabunde’s pellets useful for
liquid and gas. Nowhere does the Schlegel Declaration show preparing
pellets in the manner taught by Examples 1-3 of Klabunde. Specifically, we
find that the Schlegel Declaration is silent as to preparing pellets by
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