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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