Interference No. 103,208
Hoshino et al. v. Tanaka
would have been unexpected to one with ordinary skill in the
art. That important fact has to be alleged and established by
Hoshino as the moving party, if Hoshino relies on beneficial
results as an indicia of nonobviousness.
To the extent that Hoshino’s Motion H2 does, only with
respect to proposed new count 2, allege that the improvement
would not have been obvious to one with ordinary skill in the
art, note that (1) argument of counsel does not take the place
of evidence, Estee Lauder, Inc. v. L’Oreal, S.A., 129 F.3d
588, 595, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997); Meitzner v.
Mindick, 549 F.2d 775, 782, 193 USPQ 17, 22 (CCPA), cert.
denied, 434 U.S. 854 (1977); In re Pearson, 494 F.2d 1399,
1405, 181 USPQ 641, 646 (CCPA 1974), (2) nonobviousness does
not equate to unexpectedness since something nonobvious is not
necessarily surprising, and (3) when unexpected results are
asserted, it must be shown by comparison of the claimed
invention's results with the result obtained by the closest
prior art. In re Baxter Travenol Labs, 952 F.2d at 392, 21
USPQ2d at 1285; In re De Blauwe, 736 F.2d at 705, 222 USPQ at
196. Here, no specific information accompanied the first
Utagawa declaration to show what particular tests were made
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