Appeal No. 1999-2509
Application 08/752,917
We noted above that appellant has not addressed the rejection as stated here in the brief or
reply brief. Pursuant to questions from the bench at oral hearing with respect to the manner in
which Mackey is applied here, counsel advanced the view that Mackey could not be so
interpreted, stating that the term “co-extruded” appearing at col. 5, line 36, meant that there were
separate extruders and separate dies for each of the fat-based materials, and further that the
additional materials were only added when the fat-based material, chocolate, was extruded in a
hollow tube, pointing to col. 5, lines 38-44, and Example 8, wherein fondant is co-extruded with
chocolate to provide a chocolate coated fondant. The difficulties with appellant’s oral arguments
are first, that it is contrary to the art recognized definition of the term “coextrusion” which
involves forming a mixture in a single extruder and extruding the mixture through a single die
(see above note 3), and second, Mackey teaches that the extrusion of chocolate in a hollow tube
and the use of multi-orifice dies is merely “advantageous,” not required, when such food
materials as the creamy sugar-pastes or fondants (see above note 9) are coextruded with the
chocolate as we discussed above, citing Lamberti.
With respect to the submission of the samples from the Hershey Symphony® chocolate
candy product, this evidence is mentioned in the brief (pages 13-14) but is not argued with
respect to Mackey. After the examiner again set forth the position in the answer that this
“product was . . . [not] considered relevant in view of the newly amended claims” (page 7),
appellant merely contends in the reply brief that the product “cannot be dismissed because it is
part of the prior art and provides evidence of the state of the art” (page 3; see also pages 6-7), and
again does not submit argument or objective evidence explaining the practical significance of the
comparison to the teachings of Mackey as applied above, or indeed to any of the references
applied by the examiner. It is well settled that the burden of establishing the practical
significance of data in the record with respect to unexpected results rests with appellant, 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 & 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 Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“This
court has said . . . that mere lawyers’ arguments unsupported by factual evidence are insufficient
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