Appeal 2007-1902
Application 09/398,006
(“It is not the function of this court to examine the claims in greater detail
than argued by appellant, looking for nonobvious distinctions over the prior
art.”).
Considering now the evidence in Specification Table 2 relied on by
Appellants to show “the advantages of the claimed subject matter” (see
above p. 9), the Examiner contends that the evidence in Specification
Examples 17 and 18 does not establish “an unexpected result” relative to
Comparative Examples 7 and 8 (see above pp. 6 and 10-11). Appellants do
not specifically respond to the Examiner’s position (see above pp. 9 and 12).
Appellants have the burden to submit an explanation or evidence with
respect to the practical significance of the asserted results vis-à-vis the
teachings of the applied references and why the results would have been
considered unexpected in view of the prior art by one of ordinary skill in this
art. See, e.g., In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-
66 (Fed. Cir. 1997); In re Merck, 800 F.2d 1091, 1099, 231 USPQ 375, 381
(Fed. Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52
(Fed. Cir. 1985); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358
(CCPA 1972); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA
1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971).
On this record, Appellants have not carried this burden.
Indeed, Appellants’ statement in the Specification that the tires
exemplified in Examples 17 and 18 “considerably improve the cut resistance
of the belt 34” (see above p. 19) is not a statement that the results would
have been unexpected by one of ordinary skill in the art in light of the
Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936-37.
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