Ex Parte Kinard et al - Page 5

                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                      


                                                     5                                                       

Page:  Previous  1  2  3  4  5  6  Next

Last modified: September 9, 2013