Appeal No. 2006-1738 Page 5
Application No. 10/059,564
In rejecting the claims, the examiner argued that it would have been obvious to
have compacted the cellulose substrate disclosed in Richardson and Minagawa using
the pressure conditions described in Minagawa. Examiner Answer, page 4. The
motivation to combine the references, and optimize composition density, was to improve
handling and for safety reasons (citing Richardson at Column 3, lines 9-15) or to
prevent cracking, a problem allegedly observed when crystalline cellulose is utilized
(citing Minagawa at Column 1, lines 48-60). See, e.g., Examiner’s Answer, page 3,
lines 13-15; page 4, lines 6-9; page 5, lines 5-9.
Appellant argued that “[n]othing in either of these references provides any hint
that the density parameter is to be optimized to achieve the superior and unexpectedly
good results” allegedly achieved by the claimed invention. See, Reply Brief, lines
spanning pages 5-6. These results were described in a declaration that allegedly
established that “the compressed cellulose tablet of the present invention was highly
preferred by the termites over the other two choices,” and that such results were
“unexpectedly good and beyond what one skilled in the art would expect ….” Appeal
Brief, page 10. Citing In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), the
Appellant further stated that there was no recognition that density was a “result-effective
variable.” Reply Brief, page 6.
We agree with the examiner that Richardson in combination with Minagawa
establishes prima facie obviousness, shifting the burden to Appellant to rebut it.
The application discloses on page 8, line 5, that a tabletting pressure of 516.53
kg/cm2 resulted in a tablet having a density of 1.033 gm/cc, the density recited in claim
1. In Minagawa, a conventional tabletting pressure of “about 500 kg/cm2” is disclosed
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