Appeal No. 2003-0500 Page 7
Application No. 09/794,362
The question as to whether unexpected advantages have been
demonstrated for the claimed subject matter is a factual
question. See In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260,
1263 (Fed. Cir. 1984). Thus, it is incumbent upon appellant to
supply the factual basis to rebut the prima facie case of
obviousness established by the examiner. See, e.g., In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972).
Appellant, however, does not provide an adequate explanation
regarding the factual showing in the specification and
declaration of record referred to in the briefs to support a
conclusion of unexpected advantages for the reasons outlined
above.
Indeed, appellant has not fairly established that the
results reported represent truly unexpected results for any of
the tested compounds rather than expected normal variations for
different tellurium compounds within the genus taught by the
applied prior art, much less unexpected results reasonably co-
extensive with the scope of the claimed process of representative
claim 1. We note, for example, that the declaration table B
shows an improved sensitivity of 120 for appellant’s example 112
for the 11th layer and an improved sensitivity of 117 for
compound 13 of Kashi for the 11th layer. Appellant has not
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