Scientific explanation lacking in Ex parte NAGAZUMI
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
An appellant may attempt to overcome an examiner’s obviousness rejection on appeal to the Board by submitting arguments and/or evidence to show that the examiner made an error in either (1) an underlying finding of fact upon which the final conclusion of obviousness was based, or (2) the reasoning used to reach the legal conclusion of obviousness. Similarly, the applicant may submit evidence of secondary considerations of non-obviousness [(internal citation omitted)].
To overcome obviousness
In this regard, the burden of production rests with Appellants to establish that the reported tests provide results that are unexpected, that the comparisons are with the closest prior art, and that the showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellants have not proffered any persuasive scientific explanation articulating why the reported results for the limited examples presented would have been logically expected to accrue over the extensive scope of the representative claim 20 subject matter so as to discharge Appellants’ burden of establishing unexpected results that are reasonably commensurate in scope with the claimed subject matter (Ans. 12-14; see generally Br.). See In re Dill, 604 F.2d 1356, 1361 (CCPA 1979).