Appeal No. 2000-0316 6
Application No. 08/587,821
claims 26, 27, and 82 are sufficient to meet the requirements of the claimed subject
matter. We further find that the acidizing of siliceous subterranean formation includes the
treatment of sandstone formation in view of the definition of sandstone as “a sedimentary
rock consisting of usu. quartz sand united by some cement (as silica or calcium
carbonate.”)1 As the composition of Kalfayan is contacted with sandstone in the same
manner as that of the claimed subject matter, we conclude that the method of Kalfayan
meets the requirements of claims 26, 27, and 82. It is well settled that when a claimed
process reasonably appears to be substantially the same as a process disclosed in the prior
art, the burden of proof is on the applicants to prove that the prior art process does not
inherently or necessarily possess the characteristics attributed to the claimed process. In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Accordingly, we conclude based on the totality of the record before us, that the
disclosure of Kalfayan in and of itself is sufficient to establish a prima facie case of
obviousness. The burden accordingly shifts to appellants to overcome the presumption of
obviousness that has been created. 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
1Webster’s Ninth New Collegiate Dictionary, p. 1041 (Springfield, MA., Merriam-Webster, Inc.,
1986). Copy attached.
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