Appeal 2007-0612
Application 09/838,866
Based on my education and experience in the field of metallurgy,
prior to the time of the above-mentioned tests, the vibration
dampening property of the aluminum matrix composite was unknown
and the relatively high vibration damping of that metal matrix
composite was unexpected.2 [¶ 16]
Weaver’s declaration statements regarding unexpected results are directed toward
the metal matrix composite itself and, therefore, may be relevant to the
patentability of the metal matrix composite over the prior art. The Appellant,
however, is not claiming the metal matrix composite but, rather, is claiming a
horseshoe, and the Appellant has not shown unexpected results of a horseshoe
versus other objects fabricated from the metal matrix composite. Moreover,
Weaver’s argument regarding unexpected results is deficient in that there is no
supporting evidence, let alone evidence that is commensurate in scope with the
claims, the broadest of which encompasses molten metals selected from aluminum,
magnesium, titanium and mixtures thereof, silicon boride compositions selected
from silicon tetraboride, silicon hexaboride and mixtures thereof, and amounts of
silicon boride composition ranging from about 0.1 wt% to about 80 wt%. See In re
Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens,
622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980). See In re Baxter
Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); In re
De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
2 The Appellant should clarify whether the vibration property was still unknown as
of the Appellant’s invention date.
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