Appeal No. 96-0112
Application 07/877,913
According to appellants at page 5 of the Brief, Figure 2 generated by a computer program
shows that the claimed subject matter imparts unexpected results over that of the closest prior art. To
support their position, appellants refer to an affidavit filed under 37 CFR § 1.132 by Mr. Adornato,
one of the inventors in the instant application (hereinafter referred to as “the Adornato affidavit”).
Having carefully reviewed the specification examples, Figure 2 and the Adornato affidavit, we find
ourselves in full agreement with the examiner that appellants have not satisfied their burden of
establishing that the claimed subject matter as a whole imparts unexpected results.
First, it is not enough for appellants to show that the results predicted through a computer
program for appellants’ invention and the comparative examples are different. Appellants have the
burden of showing that the differences are significant and unexpected. See In re Freeman, 474 F.2d
1318, 1324, 177 USPQ 139, 143 (CCPA 1973) (the burden of showing unexpected results rests on
appellants who rely on them); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA
1971) (the difference in results must be significant and of practical advantage). This appellants have not
done. The significance of the predicted results, for instance, cannot be determined since appellants do
not indicate the margin of error applicable to the prediction based
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