Appeal No. 2003-0941
Application No. 09/797,296
on pages 8-9 of the answer, and incorporate the examiner’s
position therein as our own.
In view of the above, we determine that the examiner has
established a prima facie case of obviousness.
A prima facie case of obviousness is rebuttable by proof
that the claimed invention possesses unexpectedly advantageous
or superior properties. In re Papesch, 315 F.2d 381, 386-87,
137 USPQ 43, 47-48 (CCPA 1963).
On page 4 of the brief, appellants argue that their
technique achieves unexpected results such as (1) the viscosity
or drift of polysiloxanes can be better controlled and (2) no
foam control is required. In response, the examiner states
that Traver teaches that removal of volatile solvents to improve
the film forming properties and obtain stable emulsions. The
examiner also states that McGlothlin teaches that the use of
pervaporation eliminates the foaming problem. Therefore, the
examiner explains why such results are not unexpected.
Appellants also refer to their superior results set forth
in Tables 1-3 (removal of 26%, 54%, and 38% of cyclics,
respectively) versus the 6% removal amount achieved by Example
11 of Traver.
The examiner responds to this argument by stating that the
comparison is unconvincing because it only compares results with
Traver. We disagree with the examiner’s reasoning here, but
agree that the comparison is insufficient to rebut the prima
facie case for the following reasons.
We note that it is not an unreasonable burden on appellants
to require comparative examples relied on for nonobviousness to
be truly comparative. In the instant case, the cause and effect
sought to be proven is loss here in the welter of unfixed
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