Appeal No. 2006-0468
Application 09/885,395
of the prior art. [Citations omitted] Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.”); In re Keller, 642 F.2d 413, 425-26,
208 USPQ 871, 881-82 (CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary reference; nor
is it that the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.”).
We now turn to the evidence of nonobviousness based on a comparison involving
Comparative Example C2 and inventive Example 4 as shown in specification Table 1 on which
appellants rely in the brief (pages 5-6). We initially point out to the examiner that there is no
requirement that a property disclosed in the specification for a product must be specified in a
claim encompassing that product in order for appellants to rely on that property with respect to
unexpected results. However, appellants have the burden to submit an explanation or evidence
with respect to the practical significance of the results of the submitted comparison vis-à-vis the
teachings of the applied references and why the results would have been considered unexpected.
See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997);
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 Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA 1972); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972);
In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971). We find that appellants have
not carried their burden.
Appellants disclose in the specification that the label of Comparative Example 2 is a
“reflective material bearing the heat-activated adhesive, as described in Example 1, [that] was
coated with two thicknesses, respectively, of a solvent-borne acrylic pressure-sensitive adhesive
(available as AEROSETTM 1450-Z-4)” in which the substrate is “[a] retroreflective material
bearing a heat-activatable adhesive (commercially available as 3MTM SCOTCHLITETM
Reflective Material . . . )” and the “PSA dry thickness, µm” of each thickness is “20” (page 12,
l. 30, to page 13, l. 2, page 14, ll. 8-10, and specification Table 1). Inventive Example 4 is
described as “[a] microsphere pressure-sensitive adhesive dispersed in a solvent as described in
US 3,691,140 . . . and US 4,166,152 . . . was coated on the heat-activated adhesive-bearing
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