Thursday, October 25, 2012

Conclusory statements do not suffice

From within Ex parte He

Significantly, the Appellants have failed to direct us to any evidence establishing that these results would have been “unexpected.” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir, 1997) (attorney argument is not the kind of factual evidence that is required to rebut a prima facie case of obviousness); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“Mere argument or conclusory statements in the specification does not suffice.”). To the extent that the decrease in creep exhibited by formulations E1 and A2 may have been an improvement over other prior art compositions, a mere improvement is not sufficient to establish that the results would have been “unexpected.” See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of “unexpected results” to be probative evidence of non-obviousness, the applicant must establish that the difference between the results obtained through the claimed invention and those of the prior art would not have been expected by one skilled in the art at the time of invention).

Of closest prior art:

Finally, the Appellants have failed to explain, in any detail, why the comparative compositions disclosed in the Appellants’ Specification constitute the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“results must be shown to be unexpected compared with the closest prior art”).


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