Appeal 2007-0442
Application 10/470,060
812 (CCPA 1969) (“[I]t is proper to take into account not only specific
teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom...”).
The Appellant asserts that “the use of epitaxial silicon yields several
advantages as demonstrated in Figure 2 of Appellant’s invention” (Br. 7).
However, the Appellant does not aver, much less argue, that these
advantages are unexpected. In re Klosak, 455 F.2d 1077, 1080, 173 USPQ
14, 16 (CCPA 1972) (the difference in the results obtained by the claimed
subject matter and the prior art must be shown to be unexpected); In re
Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir.
1997)(party asserting unexpected results has the burden of proving that the
results are unexpected). Nor does the Appellant explain why the showing
relied upon is reasonably commensurate in scope with the breadth of the
claimed invention. In re Harris, 409 F.3d 1339, 1344, 74 USPQ2d 1951,
1955 (Fed. Cir. 2005); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ
227, 230 (CCPA 1978). The Appellant simply fails to prove that the
claimed invention imparts unexpected results, thereby failing to rebut any
inference of obviousness established by the Examiner. See, e.g., In re
Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966)(applicant
required to submit clear and convincing evidence to support an allegation of
unexpected property).
As to the § 103 rejection of claims 6 and 7, the Appellant only argues
that none of Corboy Jr., Sato, and Aria remedies the above-argued
deficiencies in Faraone and Jacobson. Thus, for the same reasons set forth
above, we determine that the Appellants’ argument is not convincing.
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