Appeal 2007-4185
Application 10/743,097
sufficiently rebut the prima facie case. Appellants contend Combes evinces
the formula set forth therein is known in the art, and when applied to the
disclosure in the Specification, shows that “the only way to get 100% value”
in the disclosed example, is when all 2 grams are on the top screen, leading
to the calculation “cohesion = 50(2) + 30(0) + 10(0), or 100%,” (Br. 9-10;
see also Vandewinckel Declaration ¶ 5; Reply Br. 1-2). Thus, Appellants
contend this establishes “the specification indicates that the cohesion value
of the present application is calculated using the well known equation” (Br.
10). Appellants contend “one would select appropriate screen sizes where
the toner particles could theoretically pass through all the screens” because
otherwise, cohesion would not be accurately determined” (Reply Br. 2).
Appellants contend the disclosure in the Specification provides reasonable
“guidance to the parameters to obtain the cohesion value,” with “[s]pecific
Declaration Under 37 C.F.R. § 1.136 (Vandewinckel Declaration) as
submitted in the Amendment After Final Rejection filed June 29, 2006
(Amendment), to the extent the arguments and testimonial evidence are
based in any manner on one or more of three documents which were not
submitted with the Amendment as pointed out by the Examiner in the
Advisory Action mailed July 12, 2006 (Advisory Action 3). Appellants
submitted the three document in the Evidence Appendix to the Brief. The
Examiner holds the three documents inadmissible because they were “first
submitted at the filling of the Brief,” pointing out the “evidence was never
submitted before Appeal and applicants were made aware of this before
Appeal was taken” (Answer 2). We agree with the Examiner. See
37 C.F.R. §§ 41.33(d)(2) and 41.33(c)(1)(ix) (2006); cf., e.g., In re Lindner,
457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“This court has said
… that mere lawyers’ arguments unsupported by factual evidence are
insufficient to establish unexpected results. [Citations omitted.] Likewise,
mere conclusory statements in the specification and affidavits are entitled to
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