Appeal No. 1997-2958 17
Application No. 08/401,719
invention claimed and how the examples represent the appropriate comparison between the invention
claimed and the prior art when it is not apparent on the face of the working examples. Ex parte
Gelles, 22 USPQ2d 1318, 1320 (Bd. Pat. App. & Int. 1992).
Since appellants’ working examples do not provide an appropriate comparison between
compositions within and outside the claimed sodium and calcium ranges with all other variables held
constant, a determination of the effect of varying the sodium and calcium levels on properties such as
cavitation is impossible. Appellants have not shown criticality with a sufficient level of objective
evidence.
Appellants’ brief states at page 17, lines 7-8, that the claimed processing limitations are critical
“as discussed above and throughout the specification”. Appellants nowhere point out what specific
data shows the alleged criticality of the rolling rate, annealing temperature range, time periods, or
speeds or how the illustrated examples compare the invention with the closest prior art. Unexpected
results must be established by factual evidence. Mere argument or conclusory statements are not
enough. In re Geisler, 116 F.2d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997). An
explanation of where to find the data is, as a minimum, necessary. Furthermore, when it is not apparent
on the face of the data, appellants also have the burden of explaining how the data is commensurate in
scope with the claimed invention and to represent the appropriate comparison between the claimed
invention and the prior art. Ex parte Gelles, 22 USPQ2d at 1320.
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