Appeal 2007-4193
Application 10/367,432
considered unexpected in view of the prior art by one of ordinary skill in this
art. See, e.g., In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-
366 (Fed. Cir. 1997); In re Merck, 800 F.2d 1091, 1099, 231 USPQ 375, 381
(Fed. Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52
(Fed. Cir. 1985); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358
(CCPA 1972); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA
1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971).
On this record, Appellants have not carried this burden.
We find the differences in preparation of the corrosion inhibitors and
in the amounts and kind of ingredients between the compared Corrosion
Inhibitors, the Samples containing the Corrosion Inhibitors, and the
differences in the evaluation tests evince a number of unfixed variables
which have not been explained. See, e.g., In re Dunn, 349 F.2d 433, 439,
146 USPQ 479, 483 (CCPA 1965) (“[W]e do not feel it an unreasonable
burden on appellants to require comparative examples relied on for non-
obviousness to be truly comparative. The cause and effect sought to be
proven is lost here in the welter of unfixed variables.”). Indeed, in no
comparison is the sole difference the average molecular weight of the
polyisobutenyl group on the succinimide moiety and, in this respect, the
differences in the polyamine linkage between the succinimide moieties in the
respective Corrosion Inhibitors would reasonably be expected to affect the
results obtained. See, e.g., In re Heyna, 360 F.2d 222, 228, 149 USPQ 692,
697 (CCPA 1966) (citing Dunn, 349 F.2d at 439, 146 USPQ at 483).
Furthermore, Appellants’ only statement on the record with respect to
the results obtained is that “better” results are achieved by the claimed
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