Appeal No. 2000-1832
Application 08/868,736
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Appellants’ traverse of this ground of rejection is based solely on the evidence in the
comparisons set forth in the specification as relied in the brief (page 7). On this record, it is
apparent from the reported results (specification Tables 1 and 2) that compositions “P2 and P3,”
representing the invention disclosed in the specification, perform better than compositions “P3
and P4,” stated to represent the prior art, although the significance of such results is not
established on the record. See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997); In re Merck & Co., 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 D’Ancicco, 439 F.2d 1244, 1248,
169 USPQ 303, 306 (CCPA 1971).
However, even if the significance of the results were established, we find that such
evidence does not directly or, on this record, indirectly represent the claimed process
encompassed by appealed claim 33 in which the deplasticizing agent is added to the aqueous
addition-polymer dispersion prior to drying, and the plasticizing agent is added to the
intermediate powder product. In other words, the order of adding the deplasticizing and
plasticizing assistants in compositions “P2 and P3” is opposite to that specified in appealed claim
33, and thus instead reflects the order in appealed claim 32, which is not rejected over Schulze,
and appellants have not established that such evidence indirectly pertains to appealed claim 33.
Cf. In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 297-98 (CCPA 1974) (“Appellants’ brief
goes through a detailed, step-by-step analysis of the evidence in support of the conclusion to be
drawn from the indirect comparison . . . ,” establishing that the indirect evidence provided a
reliable indication of the performance of the closest claimed and prior art compounds).
Even if it can be said that the evidence based on the comparisons pertains to the claimed
process encompassed by appealed claim 33, we find that the evidence is not based on the closest
prior art, which is the plasticizing and deplasticizing assistants specifically set forth in Schulze.
See generally, Baxter Travenol Labs, supra (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared to the closest prior art.
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