Appeal 2007-2677
Application 10/622,229
Nevertheless, the Appellants argue that Examples C-1 to C-7 are comparable
to the invention of Darsillo. Brief 6-7.
The Appellants bear the burden of showing that the claimed invention
exhibits unexpected results. The burden is by clear and convincing
evidence. McClain v. Ortmayer, 141 U.S. 419, 429 (1891) (conclusive
evidence needed to show invention performs some new and important
function not performed by the prior art); In re Heyna, 360 F.2d 222, 228,
149 USPQ 692, 697 (CCPA 1966) (applicant required to submit clear and
convincing evidence to support an allegation of unexpected property). See
also In re Passal, 426 F.2d 409, 412, 165 USPQ 702, 704 (CCPA 1970) and
In re Lohr, 317 F.2d 388, 392, 137 USPQ 548, 550 (CCPA 1963)
(conclusive proof of unexpected results not submitted by applicant).
Table 1 illustrates the porosity, gloss, and fade in several comparative
examples (C-1 to C-9) and several “inventive” examples (I-1 to I-5).
Inventive Examples I-3 and I-4 are the only examples that appear to fall
within the scope of claim 1. Comparative examples C-5 and C-6 appear to
correspond to inventive examples I-3 and I-4, respectively, with the
exception that the elements of inventive examples I-3 and I-4 have a shell
whereas the elements of comparative examples C-5 and C-6 do not have a
shell. See Table 1, Specification 18.
We recognize that there are differences in porosity, gloss, and fade
between the elements of inventive examples I-3 and I-4 and the elements of
comparative examples C-5 and C-6. However, the Appellants have failed to
present any evidence, let alone clear and convincing evidence, establishing
that one of ordinary skill in the art would have understood these differences
to be significant and unexpected, especially in view of the disclosure in
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