Appeal 2007-1692
Application 10/415,009
According to Appellants, their adhesives are migration-free after only one
day while the monomer-containing prior art adhesives, in most cases, took
about 14 days to become migration free. Appellants allege that this effect on
migration is advantageous and was unknown and unexpected at the time the
invention was made. (Reply Br. 1).
Once a prima facie case of obviousness is established, the burden of
coming forward with evidence and argument in rebuttal is shifted to the
appellant. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). “In order for a showing of ‘unexpected results’ to be
probative evidence of non-obviousness, it falls upon the applicant to at least
establish: (1) that there actually is a difference between the results obtained
through the claimed invention and those of the prior art, … and (2) that the
difference actually obtained would not have been expected by one skilled in
the art at the time of invention.” In re Freeman, 474 F.2d 1318, 1324, 177
USPQ 139, 143 (CCPA 1973) (citations omitted).
Looking to the portion of the Specification cited by Appellants, we
find no convincing evidence that the alleged difference in migration would
have been unexpected to one of ordinary skill in the art. Appellants point to
no statement in the Specification in which the results are referred to as
unexpected. Nor do Appellants state how the data starting at page 46 of the
Specification supports such a conclusion. Nor is it enough that Appellants
allege the result is unexpected in the Reply Brief. “[I]t is well settled that
unexpected results must be established by factual evidence.” In re Geisler,
116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); see also
In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“mere
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