Appeal No. 2000-1162
Application 08/967,876
of manufacture, is clearly demonstrated by the Examples in the present specification,” and that
the claimed EPDM compositions of the appealed claims “may be distinguished from the
compositions disclosed by Bush on the basis of the amount and type of carbon blacks
incorporated therein and their smooth glossy finishes and glossmeter readings” (reply brief, page
5).
It is well settled that the burden of establishing the significance of data in the record with
respect to unexpected results, rests with appellants, which burden is not carried by mere
arguments of counsel. See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
1365-66 (Fed. Cir. 1997); In re Merck, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir.
1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Klosak,
455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972); In re Lindner, 457 F.2d 506, 508, 173
USPQ 356, 358 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306
(1971).
On this record, appellants have not carried their burden. We have not considered the
evidence in the specification to a greater extent than appellants have relied thereon in the brief
and reply brief. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than
argued by appellant, looking for nonobvious distinctions over the prior art.”). In this respect,
appellants have merely alleged, with respect to Bush, that the results in the specification are
unexpected, which allegation does not establish how the evidence in the specification provides an
actual comparison of the properties of the claimed compositions with those of Bush, and such a
comparison is not apparent on this record. See In re Hoch, 428 F.2d 1341, 1343-44, 166 USPQ
406, 409 (CCPA 1970) (evidence must provide an actual comparison of the properties of the
claimed compositions with compositions of the references). Indeed, it is well settled that
unsupported arguments of counsel is entitled to little, if any, weight. Lindner, supra (“This court
has said . . . that mere lawyers’ arguments unsupported by factual evidence are insufficient to
establish unexpected results. [Citations omitted.]”).
With respect to appellants contentions with respect to Joyner, in the absence of an
explanation or additional objective evidence, we fail to find that either carbon black “C” or “D”
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