Appeal No. 2006-2817 Page 9
Application No. 10/734,979
This same reasoning is reflected in those cases in which an applicant
unsuccessfully tried to rebut prima facie obviousness by a showing of unexpected
results. These cases hold that the unexpected results must be “commensurate in scope
with the degree of protection sought by the claimed subject matter.” In re Harris, 409
F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir. 2005). For example, in In re
Muchmore, 433 F.2d 824, 826, 167 USPQ 681, 683 (CCPA 1970), the applicant had
shown “unexpectedly superior properties” for “some specific processes” covered by the
claim, but “[m]any specific processes” within the claim yielded results “no better than”
the prior art. The rejection was affirmed because the method claim still read “on
obvious and unobvious subject matter.” Id. See also In re Costello, 480 F.2d 894, 895,
178 USPQ 290, 292 (CCPA 1973).
For the foregoing reasons, we conclude that there is adequate evidence of prima
facie obviousness to affirm this rejection.
An applicant may rebut a prima facie case of obviousness by providing a
“showing of facts supporting the opposite conclusion.” Such a showing dissipates
the prima facie holding and requires the examiner to “consider all of the evidence
anew.” Piasecki, 745 F.2d at 1472; In re Rinehart, 531 F.2d 1048, 1052 [189
USPQ 143] (CCPA 1976). Rebuttal evidence may show, for example, that the
claimed invention achieved unexpected results relative to the prior art, In re
Geisler, 116 F.3d 1465, 1469-70 [43 USPQ2d 1362] (Fed. Cir. 1997); that the
prior art teaches away from the claimed invention, id. at 1471; that objective
evidence (e.g., commercial success) supports the conclusion that the invention
would not have been obvious to a skilled artisan.
In re Kumar, 418 F.3d 1361, 1368, 76 USPQ2d 1048, 1052 (Fed. Cir. 2005).
Although Appellants state that the claimed subject matter has unexpected results
(“unexpected advantage”) (see e.g., Response filed Nov. 16, 2005; Brief,
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