Appeal 2007-1905
Reissue Application 10/931,249
Patent 6,444,720 B1
1 An inventor must show that the results said to be achieved with the
2 invention are actually obtained. It is not enough to show that results are
3 obtained which differ from those obtained in the prior art—any difference
4 must be shown to be an unexpected difference. In re Klosak, 455 F.2d 1077,
5 1080, 173 USPQ 14, 16 (CCPA 1972). See also In re Geisler, 116 F.3d
6 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (party asserting
7 unexpected results has the burden of proving that the results are
8 unexpected).
9 The showing must be clear and convincing. McClain v. Ortmayer,
10 141 U.S. 419, 429 (1891) (conclusive evidence needed to show invention
11 performs some new and important function not performed by the prior art);
12 In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966)
13 (applicant required to submit clear and convincing evidence to support an
14 allegation of unexpected property). See also In re Passal, 426 F.2d 409,
15 412, 165 USPQ 702, 704 (CCPA 1970) and In re Lohr, 317 F.2d 388, 392,
16 137 USPQ 548, 550-51 (1963) (conclusive proof of unexpected results not
17 submitted by applicant).
18 A showing of unexpected results generally must be commensurate in
19 scope with the breadth of the claimed invention. In re Greenfield, 571 F.2d
20 1185, 1189, 197 USPQ 227, 230 (CCPA 1978). See also In re Harris, 409
21 F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir. 2005).
22
23 F. Discussion
24 The solving Bayer's problem argument
25 In large measure, Bayer argues that there is no "motivation" to
26 combine teachings of the prior art to solve Bayer's "problem." To the extent
13
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