Appeal 2007-0691
Application 10/465,423
1 simply arranges old elements with each performing the same function it had
2 been known to perform); Dunbar v. Myers, 4 Otto (94 U.S.) 187, 195 (1876)
3 (ordinary mechanics know how to use bolts, rivets and screws and it is
4 obvious that any one knowing how to use such devices would know how to
5 arrange a deflecting plate at one side of a circular saw which had such a
6 device properly arranged on the other side).
7 An inventor must show that the results the inventor says the inventor
8 achieves with the invention are actually obtained with the invention and it is
9 not enough to show results are obtained which differ from those obtained in
10 the prior art—any difference must be shown to be an unexpected difference.
11 In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). See
12 also In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed.
13 Cir. 1997) (party asserting unexpected results has the burden of proving that
14 the results are unexpected).
15 A showing of unexpected results generally must be commensurate in
16 scope with the breadth of the claimed invention. In re Greenfield, 571 F.2d
17 1185, 1189, 197 USPQ 227, 230 (CCPA 1978). See also In re Harris, 409
18 F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir. 2005).
19
20 F. Discussion
21 An appeal is decided on the basis of the arguments presented by an
22 appellant—in this case arguments presented by Ciba in its Appeal Brief.
23 In it's Appeal Brief, Ciba acknowledges that the Examiner cited
24 Chasan as disclosing oil that comprises triazole derivatives. Appeal Brief 4.
25 Ciba goes on to say that is "respectfully disagrees." Appeal Brief 4.
11
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