Appeal 2007-0854
Application 10/179,463
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted).
The burden of demonstrating unexpected results rests on the party
asserting them, and “it is not enough to show that results are obtained which
differ from those obtained in the prior art; that difference must be shown to
be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080, 173
USPQ 14, 16 (CCPA 1972). Moreover, it has been long held that “even
though applicant’s modification results in great improvement and utility over
the prior art, it may still not be patentable if the modification was within the
capabilities of one skilled in the art, unless the claimed ranges ‘produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.” In re Huang, 100 F.3d 135, 139, 40
USPQ2d 1685, 1688 (Fed. Cir. 1996) (quoting In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (1955), and citing In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990)).
ANALYSIS
As to the prima facie case of obviousness, Appellants do not contest it
in the Brief,6 thus, for the purposes of this Appeal, we conclude that
Appellants concede that the Examiner has met the burden of establishing a
prima facie case of obviousness.
6 Appellants state in the Reply Brief at page 2 that they have not admitted,
either explicitly or inferentially, that the Examiner has established a prima
facie case of obviousness. But as they do not point to any arguments made
in the Appeal Brief attacking the prima facie case, and also do not present
any argument as to why the Examiner failed to establish a prima facie case
in the Reply Brief, we find that Appellants have conceded the merits of the
prima facie case for purposes of this Appeal. 37 C.F.R. § 41.37(c)(1)(vii).
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013