Appeal No. 2006-0468
Application 09/885,395
surface” of the same 3MTM SCOTCHLITETM Reflective Material, apparently in a single
thickness at a “PSA dry thickness, µm” of “20” (page 13, l. 30, to page 14, l. 1, and specification
Table 1).
In the absence of an explanation or evidence with respect to the practical significance of
the results of this comparison vis-à-vis the combined teachings of Stahl and Silver and why the
results would have been considered unexpected, we find that the results shown in specification
for Comparative Example 2 and inventive Example 4 are no more than those expected between
labels which have two 20 µm layers of a polyacrylic PSA and one 20 µm layer of an elastomeric
polyacrylate ester microsphere PSA by one of ordinary skill in the art. Indeed, this person
would have expected differences in the demonstrated properties with substrates differing in the
number of layers of PSA and in the type of PSA, and particularly since elastomeric polyacrylate
ester microsphere PSAs were acknowledged by Silver to be known in the art to provide
repositioning even if the same have deficiencies on which the elastomeric polyacrylate ester
microsphere PSAs of Silver were disclosed to be an improvement (e.g., col. 1, ll. 29-44, and col.
3, ll. 12-23). Thus, on this record, we find that the evidence in the specification does not reflect
the applied prior art and the unexplained use of two layers of PSA in preparing Comparative
Example 2 inserts an unfixed variable. See generally, In re Baxter Travenol Labs., 952 F.2d
388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected compared to 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); In re Hoffmann, 556 F.2d 539, 541, 194 USPQ 126, 128
(CCPA 1977) (reference disclosed property argued to be unexpected); In re Skoll, 523 F.2d
1392, 1397, 187 USPQ 481, 484 (CCPA 1975) (reference suggested the desirability of
substituting reagent for that used in the process of another reference); In re Gershon, 372 F.2d
535, 537-39, 152 USPQ 602, 604-05 (CCPA 1967) (references teach the superiority of using a
reagent for a particular purpose); In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483 (CCPA
1965) (“[W]e do not feel it an unreasonable burden on appellants to require comparative
examples relied on for non-obviousness to be truly comparative.”).
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