Appeal Number: 2005-2231 Page 6
Application Number: 09/952,931
specific selection characteristic as long as there is some basis for making the selection. In the
present case, there is basis to make the selection of aluminum trihydrate because such is listed as
a useful filler.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1-13, 15, and 16 and that this prima facie case has not
been sufficiently rebutted by Appellants.
In order to overcome the prima facie case of obviousness, Appellants rely upon a
showing of unexpected results. The burden is on Appellants to show unexpected results. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed, Cir. 1984). To reach the ultimate
conclusion of obviousness, we set aside the initial conclusion of prima facie obviousness and
reevaluate all the evidence anew under the requirements of 35 U.S.C. § 103(3). In re Johnson,
747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
We cannot say here that Appellants have met their burden. This is because the evidence
is not commensurate in scope with the claims. See In re Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA)(“It is well established that the objective evidence of nonobviousness must be
commensurate in scope with the claims.”). Appellants’ claims are not limited to any particular
ultraviolet-polymerizable formulation, yet Appellants present test results for only an epoxy-
acrylate (70%)/N-vinyl pyrrolidone (30%) mixture. Appellants provide no evidence or
convincing reasoning indicating that analogous results will be obtained with other formulations.
Furthermore, Culler indicates that there was a known link between curing the rate and the
refractive indices of the resin and filler (Culler, col. 13, ll. 64-68). Therefore, there is evidence
that the selection of the resin is an important selection in terms of curing rate. We further note
that claim 6 is not limited to any particular transparent filler, yet Appellants provide results for
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007