Appeal 2006-0990
Application 10/209,369
demonstrate conclusively that the melting temperatures of the claimed
copolyetheresters are surprisingly and significantly improved relative to
those suggested by the Warzelhan references (Br. 6). In other words,
Appellant argues that he has provided a showing of unexpected results
which overcomes a prima facie case of obviousness. As pointed out by the
Examiner, there is no rejection based on obviousness before us (Answer 8).
Under the circumstances we will not consider Appellant’s showing of
unexpected results on this record. While a rejection under 35 U.S.C.
§ 103(a) can be overcome by a showing of secondary considerations such as
unexpected results, a proper rejection under 35 U.S.C. § 102 cannot.
See In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974)
(“If the rejection under § 102 is proper, however, appellant cannot overcome
it by showing such unexpected results or teaching away in the art, which are
relevant only to an obviousness rejection.”). We only have a
35 U.S.C. § 102 rejection before us for review in this appeal.
Remand
It is not clear on this record whether the Examiner considered
obviousness as a basis for rejection. We, therefore, remand the Application
to the Examiner for a determination of whether “the differences between the
subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains” as required under 35 U.S.C. § 103 and consideration of any
secondary indicia of non-obviousness such as unexpected results.
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