Appeal No. 2005-1161 Page 7
Application No. 09/793,406
provision of a layer comprising SiOxNy between a layer comprising dielectric material and a
layer comprising nickel or nichrome is advantageous in that it permits the durability and/or
transmission of the coated article to be surprisingly improved (Brief, p. 10).
But the prior art need not disclose or suggest the advantages articulated in Appellant’s
specification. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901-1902 (Fed. Cir. 1990)(en
banc), cert. denied, 500 U.S. 904 (1991). In fact, “the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish obviousness.” In re
Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996). It is enough that some
reason, suggestion or motivation exists in the prior art taken as a whole for making the
combination. In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1-10 and 17-20. To the extent Appellant is relying upon
the specification at page 2, lines 10-19 and page 7, lines 20-27 as a showing of unexpected
results, we conclude, from a review of the totality of the evidence, that Appellant has not met
his burden in overcoming the prima facie case of obviousness. There is no objective showing
comparing results between the closest prior art and the claimed surface-coated glass article
which is commensurate in scope with claim 5. Nor is there any statement, other than within the
Brief, that the results would have been unexpected to one of ordinary skill in the art. See In re
Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973)(“In order for a showing of
"unexpected results" to be probative evidence of non-obviousness, it falls upon the applicant to
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