Appeal 2007-2364
Application 09/879,613
1241 (Fed. Cir. 1995) (to teach away, a reference must state that it “should
not” or “cannot” be used in combinations with the other reference.).
Moreover, we are not persuaded that the Examiner erred by relying on Paley
for the suggestion to use a flexible plastic bag as a container for the sponges.
Skoufis's arguments that Paley keeps the bactericidal solution separate from
the wipers does not detract from the teaching that sealable plastic bags are
suitable for contamination-free storage of the wipers.
Thus, a sound basis exists to conclude that a prima facie case of
obviousness exists.
Skoufis alleges unexpected results in his disclosure. (FF 3–5;
Specification at 4.) However, Skoufis does not provide any experimental
results. Evidence of expected results must be weighed against evidence of
unexpected results. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991). The mere allegation of unexpected results, unsupported by
experimental evidence, carries less weight than the evidence of the
Dispensatory. We find Skoufis's specification insufficient to rebut the prima
facie case of obviousness.
Although we are reluctant to burden the Examiner with the potential
for continued prosecution in this case pursuant to 37 C.F.R. § 41.50(b), the
Examiner's failure to establish the necessary evidentiary foundation for the
legal conclusion of obviousness leaves us with little choice. Had the
information not been so readily available, we should not have hesitated
simply to reverse.
In the event of further prosecution, we suggest that the Examiner and
Skoufis consider whether an adequate written description exists in the
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