Appeal No. 2005-2131
Application 10/000,254
196 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979); In re
Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“This court has said . . . that
mere lawyers’ arguments unsupported by factual evidence are insufficient to establish
unexpected results. [Citations omitted.] Likewise, mere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent Office questions the
efficacy of those statements. [Citations omitted]”); see also In re Baxter Travenol Labs.,
952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be unexpected compared to
the closest prior art. [Citation omitted.]”); In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67,
71 (CCPA 1979) (the claimed subject matter must be compared with the closest prior art in a
manner which addresses the thrust of the rejection); cf. In re Woodruff, 919 F.2d 1575, 1577-78,
16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990) (“The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or other variable within
the claims. [Citations omitted.] These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. [Citations omitted.]”).
Furthermore, appellants do not contest the teachings of Majkrzak with respect to the
claimed apparatus encompassed by appealed independent claim 18, but argue appealed claim 20,
dependent thereon, which requires that “the linerless label is provided as printed label prior to
being supplied to the cutter,” thus further limiting claim 18 which specifies “[a]n apparatus . . .
comprising” at least, among other limitations, “a source of the cut linerless labels on a roll of
temporary sheet.” We determine that claims 18 and 20 encompass apparatus that includes the
materials on which the claimed apparatus is intended to work, and thus, the materials, such as the
printed linerless labels of claim 20, do not constitute any structural limitation which patentably
distinguishes the claims from the applied prior art. See generally, In re Otto, 312 F.2d 937,
939-40, 136 USPQ 458, 459-60 (CCPA 1963) In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA
1935); In re Rishoi, 197 F.2d 342, 344-45, 9 USPQ 71, 72-73 (CCPA 1935); cf. Ex parte
Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987).
Accordingly, on this record, we determine that one of ordinary skill in the art routinely
following the combined teachings of Majkrzak, Schumann, Koehlinger, Boreali, Evans and
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