Appeal 2006-1847
Application 10/295,813
good. See In re Waymouth, 499 F.2d 1273, 182 USPQ 290 (CCPA
1974); and In re Saether, 492 F.2d 849, 181 USPQ 36 (CCPA 1974).
ANALYSIS
In our minds, this case turns upon the single evidentiary issue that the
Appellants have not challenged or rebutted the Examiner’s findings of fact
that the parameters listed in clauses b and d through f of claim 1 and the last
four clauses of claim 25 are result effective variables. The Examiner made
findings on pages 6 and 7 of the Answer that prima facie establish these
variables are recognized in the prior art as result effective. Evidently, the
Appellants concur with these findings. Certainly, the Appellants never
mention this issue or respond to the examiner’s findings on this issue in
either the Brief or Reply Br. Since the Examiner’s findings are unchallenged
in any respect, the burden shifts to the Appellants to provide evidence that
the exact values for the claimed parameters produce a result that is
unexpectedly good. Appellants have not provided such evidence in the
specification or in declarations furnished to the Examiner. Appellants have
not relied upon Figure 5 of their Drawings for such evidence for good
reason. There is simply not enough explanatory material in the specification
to know exactly what has been tested. Specifically, the “standard inner
structure” has not been specified.
We further concur with the Examiner that the ranges claimed for the
parameters in claim 1 and 25 are, for the most part, overlapped by the prior
art. There appears to be controversy with respect to whether the prior art
overlaps Appellants’ claimed range with respect to the number of notches
per square centimeter. Be that as it may, we agree with the Examiner that
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