Appeal No. 2000-0019
Application 08/977,451
reasonable expectation of success when compounding and extruding the microspheres
and polyolefin.
We therefore find that the Examiner has established a prima facie case of
obviousness.
Rebuttal Evidence
The Appellants point to results contained in the specification that purportedly
render claims 1-6 unobvious (Appeal Brief, Page 13, section E).
It is well known that evidence of unobviousness must be properly considered and
the entire matter reweighed (see, e.g. In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 688 (Fed. Cir. 1986) (declaration evidence). However, whether e vidence shows
unexpected results is a question of fact and party asserting unexpected results has the
burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-
70, 43 USPQ2d 1362, 1364-5 (Fed. Cir. 1997).
Put another way, one relying on data to establish has a burden of establishing
that unexpected results are actually obtained and the significance of those results to
one having ordinary skill in the art. Cf. In re Klosak, 455 F.2d 1077, 1080, 173 USPQ
14, 16 (CCPA 1972) (inve ntor must show that the results claimed to obtained with a
claimed invention are actually obtained with the invention).
Finally, objective evidence of non-obviousness must be commensurate in scope
with the claims that the evidence is offered to support. In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980); In re Greenfield, 571 F.2d 1185, 1189, 197
USPQ 227, 230 (CCPA 1978); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358
(CCPA 1972); In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971).
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