Appeal No. 2007-1237
Application No. 10/813,367
Appellants have not contested the establishment of a prima facie case of
obviousness by the Examiner. Rather Appellants contended that “[t]he key issue
on appeal is whether the evidence of unexpected results provided by the Appellants
rebuts the rejection based on obviousness over a combination of the prior art” (Br.
9).
Thus, the issue on appeal in this case is as follows: Is Appellants’ evidence
of unexpected results sufficient to successfully rebut the Examiner’s established a
prima facie case of obviousness? We answer this question in the negative.
Appellants may rely on evidence of unexpected results to rebut an
established prima facie case of obviousness. See In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Rebuttal may take the form of “a
comparison of test data showing that the claimed compositions possess
unexpectedly improved properties ... that the prior art does not have, that the prior
art is so deficient that there is no motivation to make what might otherwise appear
to be obvious changes, or any other argument ... that is pertinent.” In re Dillon,
919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed.Cir.1990) (en banc) (citations
omitted).
Regarding the unexpected results, Appellants state:
The Applicants believe that the present invention exhibits
surprising results in view of the prior art. In particular, the prior art
would not lead one skilled in the art to expect the synergistic effects on
melt viscosity and volume resistance achieved by using a blend of
carbon nanotubes and carbon black. Also, the Applicants believe that
the current invention demonstrates an unexpected long term stability in
volume resitivity [sic, resistivity].
Table 1 on page 18 [sic, 13] of the specification reports the
viscosity for various compositions, and the viscosity of the Example I
composition (all carbon black) is significantly higher at various shear
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013