Appeal 2007-2825
Application 10/262,036
1 The showing must be clear and convincing. McClain v. Ortmayer,
2 141 U.S. 419, 429 1891) (conclusive evidence need to show invention
3 performs some new and important function not performed by the prior art);
4 In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966)
5 (applicant required to submit clear and convincing evidence to support an
6 allegation of unexpected property). See also In re Passal, 426 F.2d 409,
7 412, 165 USPQ 702, 704 (CCPA 1970) and In re Lohr, 317 F.2d 388, 392,
8 137 USPQ 548, 550-51 (1963) (conclusive proof of unexpected results not
9 submitted by applicant).
10
11 F. Discussion
12 The Examiner's rejection is supported by the prior art upon which the
13 Examiner relies.
14 Both Roe and Elder deal with diapers and sanitary napkins, in addition
15 to other absorbent devices.
16 The Examiner relied upon Roe to show absorbent devices and that the
17 lotion claimed by P&G is old.
18 On appeal, P&G does not argue patentability based on the
19 composition of the lotion.
20 P&G bottoms its non-obviousness case on the proposition that diapers
21 and sanitary napkins are so different that one skilled in the art would not use
22 the stripes disclosed by Elder on the Roe sanitary napkins—or we presume
23 for that matter the Elder sanitary napkins.
24 However, all the elements in P&G's claimed combination (1) are
25 known, (2) are used by P&G for their known purpose and (3) achieve
26 nothing more than a predictable result.
14
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