Appeal No. 2004-1131
Application 09/562,632
488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991) (“Both the suggestion and the reasonable
expectation of success must be founded in the prior art, not in the applicant’s disclosure.”); In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does
not require absolute predictability of success. . . . There is always at least a possibility of
unexpected results, that would then provide an objective basis for showing the invention,
although apparently obvious, was in law nonobvious. [Citations omitted.] For obviousness under
§ 103, all that is required is a reasonable expectation of success. [Citations omitted.]”); In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
We are not convinced otherwise by appellants’ contention that the working examples of
Hamates do not used an epoxysilane coupling agent as a preferred embodiment, and indeed, we
found above that this reference discloses an example of such a coupling agent. See In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.”). Appellants also allege in the brief
that “results . . . in the instant specification would clearly amount to unexpected results” (page 5),
but do not identify in the brief the comparisons that provide the “unexpected results” or why the
“results” are “unexpected.” Indeed, appellants have the burden to identify the evidence on which
they rely and submit an explanation or evidence with respect to the practical significance of such
results vis-à-vis the teachings of the applied references and why the results would have been
considered unexpected. See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
1365-66 (Fed. Cir. 1997); In re Merck, 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); 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 (1971).
We will not attempt to independently determine the comparisons on which appellants rely or the
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