Appeal No. 2005-2453
Application No. 10/102,923
to show patentability of any particular hard carbon film
material" (page 2 of Reply Brief of February 4, 2005, second
paragraph), appellants have not demonstrated that the results
obtained in Example 1 could be reasonably extrapolated to the
large number of compositions within the scope of claim 1. Also,
Example 1 has four different thicknesses of the hard carbon film
on four different surfaces, whereas appealed claim 1 fails to
recite any difference in thicknesses on the four surfaces. In
addition, Comparative Example 1 has a hard carbon film of uniform
thickness.
As for the broad ratio of thicknesses of the four surfaces
recited in claim 6, we agree with the examiner that it would have
been a matter of obviousness for one of ordinary skill in the art
to arrive at the optimum thickness of the film for each of the
surfaces. It is well settled that where patentability is
predicated upon a change in a condition of a prior art
composition, such as a change in concentration or the like, the
burden is on the applicant to establish with objective evidence
that the change is critical, i.e., it leads to a new, unexpected
result. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456, 105 USPQ
233, 235 (CCPA 1955). As pointed out by the examiner,
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