Appeal 2007-0300
Application 10/101,960
in the superior results according to the invention" (Reply Br. 2). The fatal
infirmity of this statement is that the record contains no evidence to support
the Appellants' belief. For all we know based on this record, it is only the
silica embodiment of Appellants' claimed method which yields superior
results (i.e., when alumina is used, the claimed method may produce results
which are indistinguishable from those of the Allman' method).
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. Pfizer, Inc. v. Apotex, Inc.,
480 F.3d at 1372, 82 USPQ2d at 1338. Unexpectedly superior results will
not necessarily overcome a strong case of obviousness. Id.
On the record of this appeal, it is questionable whether Appellants
have shown unexpected results, and certainly they have not shown
unexpected results which are commensurate in scope with claim 1.
Therefore, we share the Examiner's ultimate determination that the proffered
declaration evidence of nonobviousness does not outweigh the applied
reference evidence of obviousness.1 We hereby sustain, therefore, each of
the § 103 rejections advanced by the Examiner on this appeal.
The decision of the Examiner is affirmed.
1 In criticizing the declaration evidence, the Examiner states that "neither
declaration compares the results to coating with a plasma CVD process, as
the proposed rejection requires (Koda teaches plasma CVD)" (Answer 6).
By this statement, the Examiner appears to suggest that the Appellants must
compare the claimed invention to itself which is unquestionably erroneous.
In re Arakelian, 410 F.2d 429, 432, 161 USPQ 604, 606 (CCPA 1969).
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