Appeal 2007-2137
Application 10/472,911
Appellants. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The
Examiner should consider whether Appellants have met their burden with
objective evidence showing that there is a difference in results as compared
to the closest prior art, the results would have been unexpected to those of
ordinary skill in the art, and the showing is commensurate-in-scope with the
claims. See In re Freeman, 474 F.2d 1318, 1324 (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 invention.” (Citations omitted)); In re Baxter Travenol Labs, 952 F.2d
388, 392 (Fed. Cir. 1991) (The “difference in results” must be established as
being between the claimed subject matter and the closest prior art.); Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior
property must be unexpected to be considered as evidence of non-
obviousness. Thus, in order to properly evaluate whether a superior property
was unexpected, the court should have considered what properties were
expected.” (Citation omitted)); In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (“[O]bjective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”); and In re Soni, 54 F.3d 746, 750 (Fed.Cir.1995) (“It is well
settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements in the specification does not
suffice.”).
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