Appeal 2007-2658
Application 10/451,143
utilities involved is left to one of ordinary skill in the art. Compare In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980)(“[D]iscovery
of an optimum value of a result effective variable [thickness]…is ordinarily
within the skill of the art.”). This is especially true since Peker teaches that
identifying acceptable glass forming amorphous alloys to cast layers having
a thickness of at least 1 mm is well within the ambit of one of ordinary skill
in the art (col. 4, ll. 25-38). See, e.g., In re Skoner, 517 F.2d 947, 950, 186
USPQ 80, 82 (CCPA 1975)(“Expected beneficial results are evidence of
obviousness of a claimed invention[, just] as unexpected beneficial results
are evidence of unobviousness…”).
REBUTTAL EVIDENCE
The Appellants rely on Specification Examples 1 through 17 to show
that the claimed subject matter imparts unexpected results, thereby rebutting
any inference of obviousness established by the Examiner (Br. 11-14). The
Appellants have the burden of establishing the sufficiency of a showing of
unexpected results. In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16
(CCPA 1972)(“[T]he burden of showing unexpected results rests on [a
party] who asserts them”); In re Heyna, 360 F.2d 222, 228, 149 USPQ 692,
697 (CCPA 1966)(“It was incumbent upon appellants to submit clear and
convincing evidence to support their allegation of unexpected
propert[ies].”). On this record, we find that the Appellants have not carried
their burden of proof.
For one, we are not persuaded that the Appellants have demonstrated
that the Specification Examples directly or indirectly compare the claimed
subject matter with the closest embodiments exemplified in Okamoto. In re
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