Appeal 2006-2335
Application 09/851,460
obviousness within the meaning of 35 U.S.C. § 103(a). See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
When considering evidence of unexpected results to rebut a prima
facie case of obviousness, the burden rests with Appellants to indicate why
the results are unexpected, why the comparison is with the closest prior art,
and why the comparison is commensurate in scope with the subject matter
sought to be patented. See In re Mayne, 104 F.3d 1339, 1344, 41 USPQ2d
1451, 1456 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ
14, 16 (CCPA 1972); and Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat.
App. & Int. 1992). Although we agree with Appellants that it was
impossible to keep all variables constant except one (Reply Br. 5), we
determine that Appellants have not met their burden of establishing why the
comparative results are commensurate in scope with the subject matter
sought to be patented. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215,
219 (CCPA 1980). All of the multilayer film laminates tested are limited to
specific fillers (e.g., calcium carbonate) with specific particle sizes (e.g., 4.5
microns), used with specific amounts of propylene homopolymer (e.g., 47
wt. %), a specific barrier layer composition, optional adhesives, and specific
amounts and materials as the sealing layer (e.g., 75% polyethylene and 25%
polybutylene), while the claims on appeal are not so limited. See the
Specification 8:12-27; the first Bernig Declaration, page 2, and the second
Bernig Declaration, pages 1-2. Claim 1 on appeal is not limited to any
specific materials and amounts, other than the amount of “inorganic filler”
and the material (polypropylene) of the filled layer. Accordingly, we
determine that Appellants have not met their burden.
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