Appeal No. 2007-0491
Application No. 10/495,074
characteristic of the invention. We can accept, for argument’s sake, that
good “workability” and machinability” are among the basic and novel
characteristics of the claimed composition.
However, Appellants have not provided any evidence that generating
a bad smell during molding would materially affect the “workability” or
“machinability” of the composition. In particular, the Rule 132 Declaration
merely demonstrates that a “bad smell was evolved.” It does not provide
any evidence that the bad smell would materially affect the “workability” or
“machinability” of the composition.
The workability and machinability of a composition depend on the
physical properties of the composition itself. See, e.g., the specification at
pages 1-2 (poor workability of prior art composition was the result of high
viscosity) and page 12, lines 10-12 (“The plastic lens of the present
invention . . . is excellent in various mechanical and physical properties (for
example, . . . machinability).”).
Appellants have pointed to no evidence of record to show that those
skilled in the art considered smell generated during molding to be a factor in
workability or machinability. Instead, the only indication that bad smell
would materially affect a basic and novel characteristic of the invention
comes from attorney argument. However, we find this attorney argument
insufficient to demonstrate that a bad smell materially affects a basic and
novel characteristic of the invention. See In re Geisler, 116 F.3d 1465,
1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (“An assertion of what seems
to follow from common experience is just attorney argument and not the
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