Appeal No. 2005-1083
Application No. 09/950,642
the amount of a dispersing aid per the amount of water, and/or
fibers, size of a container, etc.), we agree with the examiner
that the use of the optimum amount of the dispersing aid,
inclusive of the claimed amount of the dispersing aid, for the
purpose of dispersing the metallic fibers is well within the
ambit of one of ordinary skill in the art. See In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In
re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
The appellant argues that the claimed mixing sequence
imparts unexpected results, thereby rebutting any inference of
obviousness established by the examiner. See, e.g., the Brief,
page 5. In support of this argument, the appellant refers to a
declaration executed by Homan B. Kinsley, Jr., the inventor
listed in this application, on July 14, 1999. Id. We determine
that the declaration is ineffective to overcome the prima facie
case of obviousness established by the examiner.
We initially note that Battista teaches the claimed mixing
sequence in a process essentially identical to that of the
appellant as indicated supra. Thus, the appellant cannot
overcome the examiner’s rejection by relying on the declaration
which shows that the claimed (Battista’s) mixing sequence imparts
unexpected results. To do so would be to impart patentability
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