Appeal No. 2006-0295
Application 10/053,926
converted by the process of specification Example 1, are compared with respect to gel strength
and viscosity at different WF, time and temperature, with the results graphically reported in
specification FIGs. 1-5. It is well settled that the burden of establishing the significance of data
in the record with respect to unexpected results rests with appellants, which burden is not carried
by mere arguments of counsel. See generally, Geisler, 116 F.3d at 1470, 43 USPQ2d at 1365-
66; In re Merck, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986); In re Longi, 759
F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Klosak, 455 F.2d 1077, 1080,
173 USPQ 14, 16 (CCPA 1972); 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.]”); In re D’Ancicco, 439 F.2d
1244, 1248, 169 USPQ 303, 306 (1971). Appellants have not carried this burden on this record.
We fail to find in the record any explanation or evidence establishing that the evidence in
the specification constitutes a comparison between the claimed sago starch containing
compositions encompassed by the appealed claims, as we have interpreted them above, and the
teachings of Eden, which we found above, that reflects the thrust of the rejections based on this
reference. See e.g., Baxter Travenol Labs., supra (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected compared with the
closest prior art. [Citation omitted.]”); In re Burckel, 592 F.2d 1175, 1179-80, 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). Indeed, in the absence of such evidence or
explanation, we find that the evidence based on compositions not established to represent Eden
constitutes no more than a showing of the properties of the claimed compositions per se, see
In re Hoch, 428 F.2d 1341, 1343-44, 166 USPQ 406, 409 (CCPA 1970) (evidence must provide
an actual comparison of the properties of the claimed compositions with compositions of the
reference), and that even if the evidence is held to establish the patentability of the particular
claimed sago starch containing compositions tested, the same is simply not commensurate with
the scope of the claimed sago starch containing compositions encompassed by the claims and the
range of compositions taught by Eden. See generally, In re Kulling, 897 F.2d 1147, 1149-50,
14 USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769,
778-79 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289, 295-96 (CCPA
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