Appeal No. 2005-1529
Application No. 10/385,314
Decision in its entirety with the Request for Rehearing in its
entirety. Indeed, the appellants do not argue that our reference
to the appellants’ burden of proving unexpected results with
respect to the claimed subject matter (e.g., a showing of
unexpected results must be commensurate in scope with the claims
on appeal) amounts to a new ground of rejection. See the 1
Request for Rehearing in its entirety. Thus, we decline to
consider these new arguments.
Even if we were to consider these new arguments, however,
the outcome of our Decision would not be altered. As recognized
by the appellants (the Request for Rehearing, page 3), the
sentence bridging pages 12 and 13 of our Decision contains an
inadvertent, but harmless, error. That sentence, consistent with
the appellants’ understanding at page 3 of the Request for
1It is well settled that “[t]he appellants bear the burden
of showing that the claimed invention imparts unexpected results.
In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1364 (Fed.
Cir. 1997); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ154, 16
(CCPA 1972).” See the Decision, page 13. As indicated at page
14 of the Decision, this burden requires the appellants to evince
that a showing of unexpected results is commensurate in scope
with the degree of protection sought by the claims on appeal.
Until the appellants discharge their burden, the examiner need
not rebut the appellants’ assertion of unexpected results. Here,
we simply explain why the appellants fail to carry their burden
of proving unexpected results with respect to the claimed subject
matter. See the Decision, pages 15-16.
3
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