Appeal No. 2006-2810 Page 13
Application No. 10/618,111
We find ourselves in agreement with the examiner that the Smith declaration
does not provide adequate evidence to rebut the case of prima facie obviousness.
In his declaration, Smith states that it was “unexpected” that LCT resins “could be
used in any manner as enhanced thermally conductive resins.” Smith Declaration, ¶4.
However, he did not provide any factual evidence to explain how he arrived at this
conclusion. We find this information necessary to properly weigh the evidence. For
example, the specification compares the thermal conductivity of a non-liquid crystal
epoxy resin to an alumoxane-LCT-epoxy anhydride4. Specification, page 11, ¶41. To
establish unexpected results, the claimed subject matter must be compared with the
closest prior art. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). It was not
established that a non-LCT epoxy resin is the closest prior art, e.g., closer than the LCT
epoxy resin disclosed in the Smith patent. Thus, we cannot accept Smith’s statement
without knowing the facts upon which he derived his opinion.
Additionally, in his statement concerning the combination of LCTs with other
agents to produce a resin having the claimed thermal conductivity, Smith simply
observes that it “very interesting” to have obtained a material with these properties.
Smith Declaration, ¶4. “[W]hen an applicant demonstrates substantially improved
results … and states that the results were unexpected, this should suffice to establish
unexpected results in the absence of evidence to the contrary.” In re Soni, 54 F.3d 746,
751 34 USPQ2d 1684, 1688 (Fed. Cir. 1995). We find no evidence of unexpected
results nor even a statement by the declarant that such results were “unexpected.” Just
“interesting” results do not suffice.
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