Appeal 2007-1378
Application 10/327,459
1 Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976) (the involved patent
2 simply arranges old elements with each performing the same function it had
3 been known to perform); Dunbar v. Myers, 4 Otto (94 U.S.) 187, 195 (1876)
4 (ordinary mechanics know how to use bolts, rivets and screws and it is
5 obvious that any one knowing how to use such devices would know how to
6 arranged a deflecting plate at one side of a circular saw which had such a
7 device properly arranged on the other side).
8 A prior art reference is not limited to its preferred embodiments or
9 specific working examples. In re Burckel, 592 F.2d 1175, 1179, 201 USPQ
10 67, 70 (CCPA 1979). See also In re Mills, 470 F.2d 649, 651, 176 USPQ
11 196, 198 (CCPA 1972).
12 An inventor must show that the results the inventor says the inventor
13 achieves with the invention are actually obtained with the invention and it is
14 not enough to show results are obtained which differ from those obtained in
15 the prior art—any difference must be shown to be an unexpected difference.
16 In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). See
17 also In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed.
18 Cir. 1997) (party asserting unexpected results has the burden of proving that
19 the results are unexpected).
20 Where, as here, the claimed and prior art products are identical or
21 substantially identical, or are produced by identical or substantially identical
22 processes, the PTO can require an applicant to prove that the prior art
23 products do not necessarily or inherently possess the characteristics of his
24 claimed product. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
11
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