Appeal No. 2001-0676
Application No. 08/941,132
the form of a raw rubber film (emphasis ours).” Thus, using the
same logic in the Miyamoto declaration, we can conclude that one of
ordinary skill in the art would reasonably expect the improved
efficiency in graft-copolymerization and epoxidation resulting from
the deproteinization suggested by the applied prior art since
reaction interfering non-rubber components, such polypeptides, are
no longer present during graft-copolymerization or epoxidation.
See, e.g., In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA
1975)(“[e]xpected beneficial results are evidence of obviousness of
a claimed invention just as unexpected beneficial results are
evidence of unobviousness”).
To the extent that the additional advantage indicated supra is
deemed unexpected, we still do not believe that it is sufficient to
rebut the prima facie case established by the examiner. We
determine that the recognition of the additional advantage flowing
naturally from following the suggestion of the applied prior art
cannot be the basis for patentability when the difference would be
otherwise obvious. Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App.
& Int. 1985). In other words, we find that the known advantages of
deproteinizing and graft-copolymerizing or epoxidizing natural
rubber indicated above, on balance, outweigh the newly discovered
additional advantage of doing the same. In re May, 574 F.3d 1082,
10
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