Ex Parte Mercure et al - Page 9



          Appeal No. 2005-0279                                                        
          Application No. 10/036,708                                                  

               Concerning the issue of obviousness, the appellants proffer            
          the declaration dated March 26, 2001 by Dennis J. Olheiser which            
          is said to show that the appellants’ claimed product has                    
          unexpectedly superior properties compared to the product of                 
          Wynne.  As again correctly pointed out by the examiner in the               
          answer, the proffered comparison is inappropriate.  For example,            
          because the declarant has not specifically identified the                   
          compositions and thicknesses of the compared layers, it is                  
          impossible to assess what, if any, probative value should be                
          given to the differing yield strengths exhibited by the compared            
          products.  Stated otherwise, the declaration data is insufficient           
          to evince that the claim 1 product differs at all, much less                
          unexpectedly so, compared to Wynne’s product.  As a final point             
          regarding the appellants’ assertions of unexpected properties,              
          we point out that a Section 103 rejection is not rebuttable                 
          by such evidence when, as here, the rejection actually is                   
          based on the ultimate of obviousness, namely, lack of novelty.              
          Fracalossi, id.                                                             
               In conclusion, it is appropriate to emphasize that, where              
          the claimed and prior art products are identical or substantially           
          identical, as here, the Patent and Trademark Office can require             
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