Appeal No. 96-0011 Page 9
Application No. 07/993,896
that such results would have been truly unexpected to one of
ordinary skill in the art in view of McGrath’s teaching of the
overall superiority in the physical properties of synthetic
lubricating oils over mineral lubricating oils. See column 1,
lines 39 - 43. Thus, one of ordinary skill in the art would
expect the use of synthetic lubricating oils in place of
mineral oils to result in a superior grease. Accordingly,
expected beneficial results are evidence of obviousness of a
claimed invention just as unexpected beneficial results are
evidence of unobviousness. In re Skoner 517 F.2d 947, 950, 186
USPQ 80, 82 (CCPA 1975).
It is also well settled that the burden of demonstrating
unexpected results rests on the party asserting them and the
evidence must show that the results are really “unexpected.” In
re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed.
Cir. 1986); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972). In the present case, appellants have not
established that the comparative lubricating agent made from
mineral oil and polyurea would form the basis of a proper
comparison. It is not known whether that polyurea lies within
the scope of the claimed subject matter. Nor is it known
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007