1 Whether a claimed invention produces an unexpected result is a
2 question of fact. See, e.g., In re Harris, 409 F.3d at 1341, 74 USPQ2d at
3 1953.
4 When showing unexpected results, an applicant for patent has the
5 burden of establishing that the claimed invention actually produces the
6 results said to be achieved with the invention. It is not enough to show
7 results are obtained which differ from those obtained in the prior art. Any
8 difference must be shown to be an unexpected difference. See, e.g., In re
9 Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). See also In
10 re DeBlauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)
11 (evidence of non-obviousness must be objective factual evidence, and not
12 merely argument or conclusory statements of the applicant; DeBlauwe did
13 not present any experimental data showing that prior heat shrinkable articles
14 split; due to the absence of tests comparing appellants' heat shrinkable
15 articles with those of the closest prior art, the DeBlauwe court concluded
16 that appellants' assertions of unexpected results constitute mere argument)
17 and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1364 (Fed. Cir.
18 1997) (Geisler did not offer evidence of unexpected results).
19 Where, as here, the claimed and prior art products reasonably appear
20 to be identical or substantially identical, or are produced by identical or
21 substantially identical processes, an applicant can be placed under a burden
22 to prove that the prior art products do not necessarily or inherently possess
23 the characteristics of applicant’s claimed product. See, e.g., In re Best, 562
24 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and In re Spada, 911
25 F.2d 705, 708-9, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
26 Optimization of a prior art range flows from the normal desire of
27 scientists or artisans to improve upon what is already generally known.
8
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