Appeal 20072907
Application 10644791
unexpectedly good results.38 When the prior art teaches away from
combining certain known elements, discovery of a successful means of
combining them is more likely to be nonobvious. The fact that the elements
worked together in an unexpected and fruitful manner supports a conclusion
of nonobviousness.39 Expected results, on the other hand, support a
conclusion of obviousness.40
Unexpected results must be based on comparison with the closest
prior art and must represent a difference in kind rather than a difference of
degree.41 Dr. Gallo compared three samples: (A) a composition with both
tungsten trioxide and melamine cyanurate, (B) a composition with tungsten
trioxide but no melamine cyanurate, and (C) a composition with melamine
cyanurate but no tungsten trioxide.42 According to Dr. Gallo, Sample B
totally burned in a flame test, while Sample C was unworkable and could not
be used. Consequently, Sample A, which only burned for 3-7 seconds, was
clearly better.43 Dr. Gallo states that the results of his test could not have
been predicted from the prior art.
We accord little weight to Dr. Gallo's testimony. His comparative
samples of only tungsten oxide and only melamine cyanurate are not
38 Br. 8 and Evidence Appendix item 1.
39 KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1739-40, 82 USPQ2d 1385,
1395 (2007).
40 In re Skoll, 523 F.2d 1392, 1397, 187 USPQ 481, 484 (CCPA 1975).
41 In re Harris, 409 F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir.
2005).
42 Declaration Under 37 C.F.R. §1.132 (Gallo decl.) ¶4 and Table 1.
43 Gallo decl. ¶5. Totally burned in this test meant burned for more than
20 seconds. The relevant standard is said to require both an average and
maximum burn time of no more than 10 seconds. ¶6.
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