Appeal No. 1999-1833 8
Application No. 08/480,728
claims 18 and 20 through 31.
Moreover, we do not consider the rejection over Kioka in view of Raich in the
absence of the additional secondary references to constitute a "new ground" of rejection.
The issue, in this respect, is whether appellants have had a fair opportunity to react to the
thrust of the rejection. In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425,
426-27 (CCPA 1976). Limiting the discussion to the evidence contained in Kioka and
Raich while using the same basis and teachings as the examiner relied upon does not
constitute a new ground of rejection. See Kronig, 539 F.2d at 1303, 190 USPQ at 427;
In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961).
As a rebuttal to the prima facie case of obviousness, appellants rely on the data
presently set forth in Examples 1 to 6 of the specification establishing "unexpected
results" See Brief, pages 5 through 7. Having reviewed the data present, we conclude that
appellants have not met their burden of showing unexpected results. In re Klosak, 455
F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). It is not sufficient to assert that
the results obtained are unusual or unexpected. The burden of showing unexpected results
rests on they who assert them.
Furthermore, having reviewed the data present, we conclude that the showing in
Tables 1 to 4 is not commensurate in scope with the degree of protection sought by the
claimed subject matter and are in agreement with the examiner’s conclusion, Answer, page
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