Appeal No. 1998-2733
Application 08/718,613
1443, 1444 (Fed. Cir. 1992); In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed.
Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellants’ arguments and the evidence presented in the
affidavit. For the reasons set forth above, we find that appealed claim 10 does not exclude painted
objects formed from polymer formulations that contain thiocyanate salts such as the painted objects
taught by Ukai (see brief, pages 6-7 and pages 8-9). We further interpreted claim 10 to include any
polymer formulation which meets the requirements for materials which include or form urea and/or
urethane groups, which contrary to appellants’ arguments (id., page 7), is not limited to RIM
formulations. It follows from the specific teaching of a painted object that meets the limitations of
appealed claim 10, that the examiner has not engaged in hindsight as appellants allege (id., pages 7-8).
To the extent that appellants’ argue that the evidence in the affidavit establishes unexpected results (id.,
page 8), even if it is held that the formulation of Ukai does not constitute an anticipation of appealed
claim 10, it follows from our discussion of the evidence in the affidavit above, that there is no element in
common between the teachings of Ukai and the composition representing claim 10 with respect to either
the materials or the non-volatile salt of the polymer formulation, such that the evidence is entitled to little,
if any weight, with respect to a showing of unobvious results over either Ukai alone or combined with
Knobel. It is well settled that appellants can present as evidence of nonobviousness a showing which
establishes that the claimed invention provides unexpected results with respect to the closest prior art by
submitting direct or indirect evidence which permits a conclusion respecting the relative effectiveness of
the claimed invention over the teachings of the closest prior art. See, e.g., In re Burckel, 592 F.2d
1175, 1179-80, 201 USPQ 67, 71 (CCPA 1979) (the claimed subject matter must be compared with
the closest prior art in a manner which addresses the thrust of the rejection); In re Blondel, 499 F.2d
1311, 1317, 182 USPQ 294, 297-98 (CCPA 1974) (the indirect evidence provided a reliable
indication of the performance of the closest claimed and prior art compounds). Finally, contrary to
appellants’ arguments (id., page 9), we interpreted claim 10 above to include enhancers such as that
taught by Knobel to be used with perfluoroalkyl sulfonic acid anion non-volatile metal salts.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Ukai and Knobel with
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