Appeal No. 2000-1910 Page 8
Application No. 08/785,716
prior art and the claimed invention is demonstrated, we would agree with the
examiner (Answer, page 5) “there are no direct comparisons of the flour of the
invention with the flours of the prior art.” When unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art. In re De Blauwe, 736 F.2d 699, 705, 222
USPQ 191, 196 (Fed. Cir. 1984). We also agree with the examiner (Answer,
page 6) that “[i]n order to fairly compare the mixing times of the two [flours
tested], the total glutenin content should be the same or similar.” We are not
persuaded by appellants statement that the examiner (Brief page 4) “prefer[s]
playing the role of a reviewer of a manuscript submitted for publication,
challenging the declaration, inter alia, for not specifying detail of various
experimental conditions….” Instead, we remind appellants, as set forth in
In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973):
In order for a showing of “unexpected results” to be probative
evidence of non-obviousness, it falls upon the applicant to at least
establish: (1) that there actually is a difference between the results
obtained through the claimed invention and those of the prior art;
and (2) that the difference actually obtained would not have been
expected by one skilled in the art at the time of the invention.
[Emphasis added].
Therefore, if declaratory evidence is to be relied upon by
appellants, we would encourage appellants to comply with the guidance
provided above.
We are not authorizing a Supplemental Examiner’s Answer under
the provisions of 37 CFR § 1.193(b)(1). Any further communication from
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