Appeal 2007-1798
Application 10/347,666
forward with evidence or argument was properly shifted to the applicant. In
re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
For their part, Appellants rely on the Chen Declaration to support the
assertion that Wehrmann’s composition “could only yield a high pH and
could not be expected to achieve the pH of the present claims” (Br. 3). Chen
provides the pH for 5 compositions which are asserted to be “representative
of the range of compositions set forth in the examples of Wehrmann et al.”
(Chen Declaration 2: ¶ 14). Each of the 5 compositions prepared by Chen
have a pH above 12 (Chen Declaration 3).
However, as the Examiner points out, “[t]he concentrations of
constituents in the solutions are not the same as any of the examples in
Wehrmann (Answer 6). We agree. As the Examiner explains, Appellants
and Chen both fail to identify which of Chen’s solutions relate to any
particular example in Wehrmann (id.). As set forth in In re Freeman, 474
F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973):
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 the
invention.
On this record, because Appellants’ evidence fails to accurately reflect
the examples in the prior art which they are alleged to represent, there is no
showing that there is an actual difference between the pH of Wehrmann’s
composition and the composition set forth in Appellants’ claim 1.
Accordingly, we are not persuaded by the Chen Declaration. We are also
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Last modified: September 9, 2013