Appeal No. 2006-1738 Page 10
Application No. 10/059,564
alluded to, in the cited prior art. In contrast, pressure – a surrogate for density – was
recognized in Minagawa as a variable of the compacting process. These prior art
pressure conditions produce compositions which overlap, or are very close to,
compositions having the claimed density. This is sufficient to establish prima facie
obviousness. Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779
(Fed. Cir. 1985); In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362,
1365-1366 (Fed. Cir. 1997).
Once prima facie obviousness has been established, an applicant for a patent
can rebut it with “a showing of ‘unexpected results,’ i.e., to show that the claimed
invention exhibits some superior property or advantage that a person of ordinary skill in
the relevant art would have found surprising or unexpected. The basic principle behind
this rule is straightforward - that which would have been surprising to a person of
ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746,
750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995).
A declaration was provided during prosecution by Dr. Brian T. Forschler (the
“Forschler declaration”). This declaration described feeding differences in termites that
were presented with three different baits: pine wood, powdered cellulose, and
compressed cellulose bait matrix subjected to a compaction pressure of 8590 lbs. and
having a final tablet density of 1.1 g/cc. Forschler declaration, ¶ 2. The declarant
stated that the compressed cellulose tablet was highly preferred by the termites over the
other two choices (¶ 2), but did not provide any reason as to why such a result was
unexpected.
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