Appeal 2006-3366
Application 10/864,041
and not the specific ratios of 0.25-1.0 and 0.50 in dependent claims 12 and
13 (Br. 21 and Reply Br. 14).2
Appellant argues that the teachings of Hendershot teach theoretically
possible machine configurations that encompass a spectrum of values of
SPP, but that the disclosure falls short of any enabling disclosure (Br. 22).
Additionally, Appellant contends that the tables of Hendershot were
generated by a computer and that many of the configurations have never
been made (Br. 23). While these facts are true, we do not find that this
would have been a “teaching away” or a persuasive teaching to follow a
different path than Appellant’s contend the present invention goes.
Therefore, Appellants' argument is not persuasive. Obviousness does not
require absolute predictability, only a reasonable expectation of success, i.e.,
a reasonable expectation of obtaining similar properties. See, e.g., In re
O'Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Here, we find that Appellant has speculated throughout the Brief and
Reply Brief as to why it would not have been obvious to one skilled in the
art at the time of the invention and that those skilled in the art would not
have been motivated to make the big motors that the present invention works
well with, such as with the larger number of poles (argument from the
hearing). However, arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40,
40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699,
2 We note that Appellant has not set forth the arguments to dependent
claims 12 and 13 with a separate heading as required by 37 C.F.R. § 41.37,
but we will address Appellant’s arguments thereto. We note that Appellant
has included dependent claims 12 and 13 as grouped with dependent claim
4, 8, 9, 12-14 and 17 at page 37 of the Brief and page 21 of the Reply Brief.
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