Appeal No. 1999-2529
Application 08/915,683
positive image. See In re Kronig, 539 F.2d 1300, 1304, 190 USPQ 425, 428, (CCPA 1976) (The
reference provides “ample motivation to add water to increase product yields, and we do not
view the rejection as deficient merely because appellants allege a different advantage resulting
from the addition of water. Obviousness under 35 USC 103 does not require absolute
predictability, . . . and it is sufficient here that [the reference] clearly [suggests] doing what
appellants have done. [Citations omitted.]”); see also In re Kemps, 97 F.3d 1427, 1429-30,
40 USPQ2d 1309, 1311 (Fed. Cir, 1996); In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040,
1042 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)
(in banc). It is also well settled that the mere discovery of a new property of a composition or
process will not, without more, be dispositive of the nonobviousness of the claimed invention
over the reference. See, e.g., In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1936 (Fed.
Cir. 1990); cf. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990);
Titanium Metals Corp. v. Banner, 778 F.2d 775, 782-83, 227 USPQ 773, 779 (Fed. Cir. 1985).
Thus, we now turn to appellants’ arguments that the evidence in the declaration filed
March 4, 1998 (Paper No. 19) establishes that the claimed silver bromide core containing internal
latent image direct positive photographic silver halide emulsions encompassed by appealed claim
1 unexpectedly possess the properties that are and are not suggested by the applied prior art
(brief, page 11, and reply brief, pages 3 and 4-5). We point out that it is well settled that the
burden of establishing the practical 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 & 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). Here, upon carefully considering the record as a whole in light of the arguments
advanced by appellants, we find that appellants have not carried their burden.
Appellants particularly point to Samples 208-210 in the declaration and present a table in
the reply brief (page 5) which provides certain information from Tables 1, 2 and 3 of the
sensitized.
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