Appeal No. 96-2884
Application No. 08/181,997
conversion of iron oxide to iron carbide. We agree with the appellant that one of ordinary
skill in the art would not look to the Stephens’ process of directly converting iron oxide to iron
carbide with the named five gas composition in modifying Okamura’s process of converting
metallic iron product to iron carbide. However we remain of the view that the use of a
fluidized bed in Okamura would have been prima facie obvious to one of ordinary skill in this
art.
Appellant, we note, has offered Example 2 from his specification to establish
unobvious results. Initially we point out that the presentation of evidence of nonobviousness
does not, in and of itself, mandate a conclusion of nonobviousness. Cf. In re Chupp, 816
F.2d 643, 646, 2 USPQ2d 1437, 1440 (Fed. Cir. 1987); In re May, 574 F.2d 1082, 1092, 197
USPQ 601, 609 (CCPA 1978). Upon such presentation, it is necessary to consider anew the
evidence of obviousness relied upon by the examiner and to weigh such against the
evidence of nonobviousness relied upon by appellants. In re Johnson, 747 F.2d 1456, 1460,
223 USPQ 1260, 1263 (Fed. Cir. 1984).
The burden of persuasion is on the party asserting unexpected results. In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). Hence, appellant must
compare his invention with the closest prior art, show that the claimed process exhibits a
difference, that the difference actually obtained is unexpected and of a practical advantage.
In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Freeman
474, F.2d 1318, 1324, 117 USPQ 139, 143 (CCPA 1973); In re D’Ancicco, 439 F.2d 1244,
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