Appeal 2007-1526
Application 11/035,534
representative claim 79 and cannot overcome the rejection of the claims.
See In re Boesch, 617 F.2d 272, 277, 205 USPQ 215, 220 (CCPA 1980);
In re Payne, 606 F.2d 303, 315-16, 203 USPQ 245, 256 (CCPA 1979). The
Specification Examples do not even furnish a single test conducted with an
implant treated near the lower limit of the claimed acid concentration. For
example, the tested 0.2 percent acid concentration (Examples 1 and 2) is 20
times greater in acid concentration than the 0.01% acid concentration lower
limit of representative claim 79. While Example 3 includes one calcium
phosphate precipitation induction test conducted at a 0.05% acid
concentration, that test included a relatively long 180 second treatment time
and still included five times the minimum claimed acid strength. Moreover,
representative claim 79 is inclusive of any metallic implant. Hence, the
representative claim is not limited to the tested titanium implants. Nor is
claim 79 limited to the specific testing conditions employed. Moreover,
Appellants have not satisfied their burden of explaining how the results
reported for the limited tests presented can be extrapolated to substantiate
Appellants’ contentions for the invention as broadly claimed.
Furthermore, Appellants have not explained why the comparative
examples are considered to be the closest prior art. See In re Burckel,
592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979). Also, Appellants
have not asserted unexpectedness for the claimed subject matter in the
Specification, much less persuasively explained why the reported results are
considered “unexpected.” Based on the totality of the record, including
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
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