Appeal 2006-0886
Application 10/151,093
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442, 446 n.3, 169 USPQ 423, 426 n.3
(CCPA 1971).
Appellants also argue that the working examples of their specification
demonstrate superior properties (Br. 8). Appellants, however, fail to point to
any evidence indicating that the results were considered to be unexpected to
one of ordinary skill in the art. “It is well settled that unexpected results
must be established by factual evidence. Mere argument or conclusory
statements in the specification does not suffice.” In re Soni, 54 F.3d 746,
750, 34 USPQ2d 1684, 1687 (Fed.Cir.1995) (quoting In re De Blauwe,
736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.Cir.1984)). The question here,
we emphasize, is a question of evidence and the burden is on the Appellants
to show unexpected results. In re Johnson, 747 F.2d 1456, 1460, 223 USPQ
1260, 1263 (Fed. Cir. 1984).
We also agree with the Examiner that the data relied upon by
Appellants merely shows that compositions with a methylene donor and
resorcinol have different properties than compositions without those
additives and there is no comparison to the closest prior art (Answer 6). See
In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973)(an
applicant must at least establish that there is a difference and that the
difference would not have been expected by one of ordinary skill in the art at
the time of the invention); and In re Baxter Travenol Labs., 952 F.2d 388,
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)(The difference in results must
be established as being between the claimed subject matter and the closest
prior art.).
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