Ex Parte Isogawa

Board of Patent Appeals and Interferences

Dec 31, 2008

10337288 (B.P.A.I. Dec. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUHIKO ISOGAWA
____________

Appeal 2008-5673
Application 10/337,288
Technology Center 3700
____________

Decided: December 31, 2008
____________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge,
SALLY C. MEDLEY and MICHAEL P. TIERNEY, Administrative Patent
Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
A. Statement of the Case
SRI Sports Limited (“SRI”), the real party in interest, seeks review under
35 U.S.C. § 134(a) of a Final Rejection of claims 1-8. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
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SRI’s invention is a golf ball having a marking formed by an ink
composition comprising a metal powder coated with resin and a pigment.
(Spec. Abs., 3-4, 7-9).
Representative claim 1, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
A golf ball having a marking formed by applying an ink
composition on the surface thereof, wherein the ink
composition comprises metal powder coated with a resin on the
surface thereof and a pigment as essential components.

The Examiner relies on the following prior art in rejecting the claims on
appeal:
Kiyoshi et al. (“Kiyoshi”) JP 4007368 A Jan. 10, 1992
Kametani et al. (“Kametani”) JP 11114093 A April 27, 1999

The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over Kametani and Kiyoshi.
B. Issues
Does SRI demonstrate that the Examiner erred in establishing a prima
facie case of obviousness?
Does SRI demonstrate that the claimed invention achieves unexpected
results?
C. Findings of Fact (“FF”)
Kametani
1. Kametani describes marking a golf ball with an ink layer having a
composition containing metallic powder. (Translation ¶¶ 0001, 0002,
0006-0009, 0011, 0012, 0024).
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2. Kametani describes that using an ink composition containing a pigment
and a metallic powder could create a mark having an attractive
appearance and durability. (Translation ¶ 0006).
3. Kametani’s golf ball cover material comprises an ionomer resin which is
plasma surface treated and subsequently sprayed with a 2-liquid reaction
type urethane clear coat paint following marking. (Translation ¶¶ 0030,
0033).
Kiyoshi
4. Kiyoshi describes that in the prior art metallic pigments have been used
in printing inks. (Translation 2).
5. Kiyoshi describes that in the prior art it is known that metallic coating
films made with resin coated metallic pigments have superior properties
of alkali and acid resistance. (Translation 2, 16).
6. Kiyoshi identifies the problem that coating films from metallic coating
materials made with resin coated metallic pigments are inferior in film
appearance, particularly gloss, to metallic pigments having no resin
coating (i.e., untreated metallic pigments). (Translation 2).
7. Kiyoshi aims to provide resin coated metallic pigment composition
which gives a metallic coating film appearance, particularly gloss, equal
to or better than untreated metallic pigments. (Translation 2-3).
8. Kiyoshi describes absorbing a specific liquid compound in the resin
coated metallic pigments prior to the coating film formation process to
solve the problem. (Translation 3, 5).
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Definitions
9. A coating is defined as “a layer of a substance spread over a surface for
protection or decoration; a covering layer.” THE AM. HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2004).
10. A film is defined as “a thin covering or coating”. THE AM. HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2004).
SRI’s Specification
11. SRI’s Specification identifies that it is an object of the invention to
provide a golf ball ink marking that has improved durability,
lustrousness and weather and chemical resistance. (Spec. 1-4, 9).
12. SRI’s Specification identifies that the chemical resistance, such as acid
and alkali resistance is improved by using resin coated metal powder.
(Spec. 3-4, 9).
13. SRI’s golf ball cover for inventive examples 1 to 6 and comparative
examples 1 to 3 is made of a combination of different ethylene-
methacrylic acid copolymer ionomer resins (i.e., Hi-milan 1605, Hi-
milan 1706 and Hi-milan 1707) and titanium oxide which is surface
treated by sandblasting and subsequently coated with clear paint
following marking. (Spec. 14-15).
14. SRI’s inventive examples 1 and 2 have a paste of aluminum powder
coated with acrylic resin with an aluminum content of 47%, average
particle diameter 11.5 μm and a thickness of 20 Ǻ. (Spec. 20).
15. SRI’s comparative example 3 has a paste of uncoated aluminum powder
with an aluminum powder content of 50%, average particle diameter
10.5 μm and a thickness of 18Ǻ. (Spec. 20).
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C. Principles of Law
Prima Facie Case of Obviousness
[T]he examiner bears the initial [examination] burden, on
review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability. If that burden is met, the
burden of coming forward with evidence or argument shifts to
the applicant.
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (citations omitted).
Motivation to Combine
In KSR, the Supreme Court rejected the rigid application of the “teaching
suggestion or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 127
S.Ct. 1727, 1739 (2007).
In an obviousness analysis, it is not necessary to find precise teachings in
the prior art directed to the specific subject matter claimed because
inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. Id. at 1741.
Based on its precedent, the Court reaffirmed the doctrine that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 1741.
United States v. Adams, 383 U.S. 39, 40 (1966) is illustrative of the
application of the doctrine, in which “[t]he Court recognized that when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” KSR at 1740-41.
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In KSR, the Supreme Court found that the Court of Appeals for the
Federal Circuit erred by (1) “holding that courts and patent examiners should
look only to the problem the patentee was trying to solve . . . ”; (2) assuming
“that a person of ordinary skill attempting to solve a problem will be led
only to those elements of prior art that are designed to solve the same
problem . . .” and (3) concluding “that a patent claim cannot be proved
obvious merely by showing that the combination of elements was ‘obvious
to try.’” Id. at 1742. In addressing the errors of the court, the Supreme
Court instructed that “[i]n determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the [applicant] controls.” Id. at 1741-42. The Court further instructed
that “[c]ommon sense teaches [] that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle. Id. at 1742. The Court stated that “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” Id. at 1742. The
Court instructed:
[w]hen there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options
within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill
and common sense.

Id. at 1742.
Hindsight
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
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made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Reasonable Expectation of Success
“[T]he ultimate determination of obviousness ‘does not require absolute
predictability of success.... [A]ll that is required is a reasonable expectation
of success.’” Brown & Williamson Tobacco Corp. v. Phillip Morris Inc.,
229 F.3d 1120, 1125 (Fed. Cir. 2000) (quoting In re O'Farrell, 853 F.2d
894, 903-904 (Fed. Cir. 1988)).
Analogous Art
“Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004).
Evidence
Argument of counsel cannot take the place of evidence lacking in the
record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Secondary Considerations - Unexpected Results
“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
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“Evidence of secondary considerations, including evidence of unexpected
results and commercial success, are but a part of the “totality of the
evidence” that is used to reach the ultimate conclusion of obviousness. In
some cases such evidence is the most probative of obviousness. The
existence of such evidence, however, does not control the obviousness
determination.” Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483
(Fed. Cir. 1997) (citations omitted).
“[U]nexpected results must be established by factual evidence.” In re
Geisler, 116 F.3d. 1465, 1470 (Fed. Cir. 1997). Statements that the test
results were unexpected in light of the scientific knowledge at the time must
be made in the application or through evidentiary submissions, such as an
affidavit or declaration. See Id. at 1471. “[A]ttorney argument is
insufficient to establish unexpected results.” Id. (quotations omitted).
D. Analysis
Independent claim 1 is representative and recites “[a] golf ball having a
marking formed by applying an ink composition . . . wherein the ink
composition comprises metal powder coated with a resin . . . and a
pigment . . .”. (App. Br. 33).
The Examiner finds that Kametani describes a golf ball having marks
made from ink comprising metallic powder and pigment. (Final Rejection 2,
Ans. 4). The Examiner does not rely on Kametani for describing the
metallic powder coated with a resin, but instead finds that Kiyoshi describes
a metallic powder coated with a resin. (Final Rejection 2, Ans. 4). The
Examiner concluded that one of ordinary skill in the art would have
modified Kametani with Kiyoshi to achieve the desired look of the golf ball.
(Final Rejection 2, Ans. 4). The Examiner finds that the motivation to
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modify Kametani’s metallic powder is found in the Kiyoshi reference which
states the advantage of the invention (i.e., resin coated metallic pigments
with absorbed liquid compound) is to improve gloss and coating appearance.
(Final Rejection 3, Ans. 6, 8).
Teaching, Suggestion or Motivation to Combine the References
SRI presents voluminous arguments asserting that the Examiner’s
reasoning for combining the Kametani and Kiyoshi references is improper.
SRI argues that the Examiner’s combination of the references is improper
because (1) there is no teaching, suggestion or motivation to combine found
in either of the references (App. Br. 11, 13-14, 15, 16; 30; Reply Br. 8); (2)
the rationale of “achieving the desired look” is not found in either of the
references (App. Br. 11-12, 13, 14, 25); (3) the Examiner improperly relies
on the level of skill in the art to provide the suggestion or motivation to
combine the references (App. Br. 13, 16-17, 22); (4) the Examiner’s
rationale amounts to an “obvious to try” rationale (App. Br. 12); (5) the
Examiner relies on “common knowledge” or “common sense” (App. Br. 13,
17, 22; Reply Br. 5); and (6) the Examiner uses hindsight reconstruction
(App. Br. 17-18, 27-29).
SRI’s arguments are unpersuasive. The Supreme Court has rejected the
rigid application of the teaching, suggestion, and motivation test, (TSM)
instead favoring an “expansive and flexible approach”. It is not necessary to
find precise teachings in the prior art directed to the specific subject matter
claimed because inferences and creative steps that a person of ordinary skill
in the art would employ can be taken into account. The Court also left open
the possibility that a claim be proven obvious by showing that the
combination of elements was “obvious to try” or that one of ordinary of
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ordinary skill in the art can rely upon common sense to fit the teachings of
multiple patents together like pieces of a puzzle. The Court also stated that a
person of ordinary skill is a person of ordinary creativity, not an automaton.
Further, the Court reaffirmed the doctrine that the combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.
Kametani describes a golf ball with a printed mark with an ink
composition containing metallic powder. (FF1 1). Kametani further
describes that using an ink composition containing a pigment and a metallic
powder could create a mark having an attractive appearance and durability.
(FF 2). Kiyoshi also describes that in the prior art metallic pigments have
been used in printing inks. (FF 4). Kiyoshi describes that it is known that
conventional resin coated metallic pigments have superior properties of
alkali and acid resistance. (FF 5). Kiyoshi recognizes that resin coated
pigments in metallic coating films are inferior in film appearance and gloss
in comparison to untreated metallic pigments. (FF 6). Kiyoshi’s solution of
absorbing a specific liquid compound in the resin coated metallic pigments
prior to the coating film formation process gives a metallic coating film
appearance, particularly gloss, equal to or better than untreated metallic
pigments. (FFs 7-8).
Upon reading Kiyoshi, one with ordinary skill in the art would appreciate
that conventional resin coated metallic pigments impart superior acid and
alkali resistance to film coatings. One with ordinary skill in the art would
further appreciate upon reading Kiyoshi that the metallic coating film
appearance, especially gloss, can be improved over conventional resin

1 FF denotes Finding of Fact.
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coated metallic pigments by absorbing a liquid compound in the resin coated
metallic pigments. One with ordinary skill in the art would also appreciate
that Kiyoshi’s terms “metallic coating films” and “printing inks” are used
interchangeably since films and coatings are synonymous with layers and
Kametani describes marking the golf ball with an ink layer containing
metallic powder. (FFs 1, 4-5, 9-10).
We therefore see no error in the Examiner’s conclusion that it would
have been obvious to one with ordinary skill in the art to substitute either
Kiyoshi’s conventional resin coated metallic pigments or the resin coated
metallic pigments with absorbed liquid compound for the uncoated metallic
powder in Kametani’s ink composition. Kiyoshi teaches that conventional
resin coated metallic pigments have superior alkali and acid resistance and
absorbing a liquid compound in the resin coated metallic pigments further
improves film appearance, particularly gloss. (FFs 5-7). The modification
of a known structure (i.e., ink having a metallic powder) to incorporate a
known material (i.e., resin coated metallic powder) for its known and
predictable purpose, (i.e., improved appearance and resistance to acidic and
alkaline conditions) is obvious.
SRI further argues that the motivation is lacking because the Kiyoshi and
Kametani references do not address the same problem as SRI’s invention,
nor describe or recognize the same advantages as achieved by SRI (i.e., golf
balls with superior luster, durability and resistance to weather and adverse
conditions). (App. Br. 27, 29). SRI also argues that the Examiner’s stated
problem of a need for improved gloss and coating appearance does not take
into account SRI’s problem. (App. Br. 27). SRI further argues that one with
ordinary skill in the art would not refer to the Kiyoshi reference in attempt to
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achieve the claimed invention because Kiyoshi describes blending ink
compositions into plastics. (App. Br. 26, Reply Br. 6-8).
SRI’s arguments are unpersuasive. In determining whether the subject
matter of a claim is obvious, neither the particular motivation nor the
avowed purpose of the applicant controls. SRI also does not provide
objective evidence to support its argument that one with ordinary skill in the
art would not refer to the Kiyoshi reference in attempt to achieve the claimed
invention. Moreover, it appears that SRI misapprehends the Kiyoshi
reference when it makes the ink/plastic blend argument. Kiyoshi describes
metallic coating films (i.e., inks) made with resin coated metallic pigments.
(FFs 5-7).
Additionally, SRI’s arguments that the Examiner uses hindsight are
unpersuasive. A judgment of obviousness is proper if it only takes into
account knowledge that was within the level of ordinary skill in the art at the
time the invention was made and does not include knowledge gleaned from
applicant’s disclosure. In this case, SRI does not argue, nor present
evidence, that the Examiner utilizes knowledge from SRI’s disclosure.
Here, the Examiner correctly relied on the knowledge of those skilled in the
art and therefore the rejections were not based on hindsight.
In conclusion, we do not find error in the Examiner’s combination of
Kametani and Kiyoshi.
Reasonable Expectation of Success
The Examiner finds that one of ordinary skill in the art would assume a
reasonable expectation of success based on Kiyoshi’s teachings of improved
gloss and coating appearance if the teachings of Kiyoshi are implemented in
Kametani’s invention. (Ans. 5). SRI presents voluminous arguments
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asserting that that the prior art does not establish that there would have been
a reasonable expectation of success. (App. Br. 8, 10, 12-14, 21, 28; Reply
Br. 7-8).
For example, SRI argues that (1) Kiyoshi’s coating material used on
plastic does not equate to using the same coating material on a golf ball
since golf balls are subjected to different usages and different conditions
(i.e., strong impact forces) (App. Br. 16, 29, 30; Reply Br. 6, 7); (2) there
has not been a case in the golf ball art wherein a skilled artisan would try
Kiyoshi’s technique and apply it to golf ball coatings (Reply Br. 7); and (3)
Kiyoshi does not have any description regarding durability of its marking.
(Reply Br. 7-9).
As additional examples, SRI argues that one with ordinary skill in the art
would not (1) readily understand that a pigment composition used for plastic
would work on golf balls (App. Br. 30); (2) consider any common or
conventional technique because any common or conventional understanding
of what is normal in physics is not applicable to golf balls (Reply Br. 6); (3)
consider the Kiyoshi reference because they have to consider whether
Kiyoshi’s technique would endure such extreme deformations of the golf
ball and strong impact forces (Reply Br. 7); and (4) would be in doubt about
adopting Kiyoshi’s technique and would even dismiss the concept away
because Kiyoshi’s technique is not so easily applicable to golf balls. (Reply
Br. 7).
SRI’s arguments are not persuasive. SRI does not present objective
evidence to support its numerous arguments. Argument of counsel cannot
take the place of evidence lacking in the record. Further, SRI’s argument
that one with ordinary skill in the art would not understand that a pigment
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composition used for plastic would work on golf balls is not persuasive since
Kametani and SRI’s Specification both describe golf ball covers made from
plastic. (FFs 3, 10). Also, SRI’s argument that Kiyoshi does not describe
the durability of its marking is not persuasive because Kiyoshi describes that
the metallic coating films with resin coated metallic pigments have superior
alkali and acid resistance (i.e., are more durable). (FF 5).
In addition, SRI’s arguments are unpersuasive because the ultimate
determination of obviousness does not require absolute predictability of
success. All that is required is a reasonable expectation of success. SRI has
not presented objective evidence to rebut the Examiner’s finding that one of
ordinary skill in the art would assume a reasonable expectation of success
based on Kiyoshi’s teachings of improved gloss and coating appearance.
Teaching Away, Inoperability, Non-Analogous Art
Based on misapprehensions of the Kiyoshi reference, SRI argues that
Kiyoshi provides a teaching away, Kiyoshi is non-analogous art and the
combination of Kametani with Kiyoshi leads to an inoperable device. (App.
Br. 23-28, Reply Br. 8). SRI argues that the Kiyoshi’s teaching of coating
metallic powder provides a teaching away because of the requirement that
vegetable oil or animal oil absorb the metallic pigment. (App. Br. 23). SRI
argues that Kiyoshi is non-analogous art because it does not describe using a
coating on a golf ball, but instead describes using an absorbed resin-coated
metallic pigment and describes coatings or inks that are blended into
plastics. (App. Br. 27, 28; Reply Br. 8). SRI argues that the combination of
Kiyoshi’s coated metal powder with Kametani’s golf ball would render
Kametani’s golf ball inoperative or unsatisfactory for its intended purpose
and destroy Kiyoshi’s intended function because Kiyoshi’s vegetable oil or
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animal oil would absorb the resin coated metallic pigment. (App. Br. 24-
26).
SRI’s arguments are unpersuasive. Kiyoshi does not teach absorbing a
metallic pigment with vegetable oil or animal oil. Instead, Kiyoshi describes
absorbing a liquid compound in the resin coated metallic pigments. (FF 8).
Additionally, SRI does not direct us to, and we can not find, where Kiyoshi
describes blending inks into plastic. Instead, Kiyoshi describes making
metallic coating films (i.e., inks) with resin coated metallic pigments. (FFs
5-8). Further regarding the analogous art argument, SRI has not addressed
either of the tests for the scope of analogous art; whether Kiyoshi is from the
same field of endeavor, regardless of the problem addressed, or if Kiyoshi is
not within the field of the inventor's endeavor, whether Kiyoshi is still
reasonably pertinent to the inventor’s particular problem.
Additional Arguments
SRI also argues that the resin coated metallic powder and pigment are
essential to the claimed ink composition and vegetable oil or animal oil (i.e.,
the absorbed liquid compound) as required by Kiyoshi is not essential.
(App. Br. 25). SRI’s argument is not commensurate in scope with the claim
limitations. Claim 1 is an open-ended claim utilizing the transitional phrase
“comprising” which does not exclude additional unrecited elements. Thus,
additional components can be included in the ink composition and still
remain within the scope of the claim.
For all these reasons, SRI has not sufficiently demonstrated that the
Examiner erred in concluding the subject matter would have been obvious
based on the cited references.
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Secondary Considerations - Unexpected Results
We now consider SRI’s evidence of nonobviousness. SRI argues that the
claimed invention achieves unexpected results and is more than a predictable
use of prior art elements according to their established functions. (App. Br.
18-20, Reply Br. 9). SRI argues that comparative example 3, shown in
Table 2 below, is closest to Kametani’s golf ball marking because the ink
composition of example 3 includes uncoated metallic powder. (App. Br.
19). SRI argues that inventive examples 1 and 2, shown in Table 1 below,
achieve an unexpectedly better weather resistance (i.e., lower value of ΔE)
and maintenance of luster and separation compared to example 3. (App. Br.
20). Thus, SRI argues that one of ordinary skill in the art would understand
that the present invention achieved unexpected results. (Reply Br. 9).
Table 1, reproduced from SRI’s table 3 is below.

Table 1 depicts the compositions and test results for the inventive examples.
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Table 2, reproduced from SRI’s table 4 is below.

Table 2 depicts the compositions and test
results for the comparative examples.
SRI’s assertion that comparative example 3 is closest to Kametani’s golf
ball marking fails to take into account that Kametani’s golf ball cover
material comprises an ionomer resin which is plasma surface treated and
subsequently sprayed with a 2-liquid reaction type urethane clear coat paint
following marking. (FF 3). In contrast, SRI’s golf ball cover for examples 1
to 6 and comparative examples 1 to 3 is made of a combination of ethylene-
methacrylic acid copolymer ionomer resins (i.e., Hi-milan 1605, Hi-milan
1706 and Hi-milan 1707) and titanium oxide which is surface treated by
sandblasting and subsequently coated with clear paint following marking.
(FF 13). SRI has not accounted for these differences or their effects on the
test results.
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As shown in tables 1 and 2, comparative example 3 and inventive
example 1 have identical ink compositions with the only difference being
whether the metal powder is or is not coated with resin. Comparative
example 3 and inventive example 2 only have the same amount of metal
powder (i.e., 10) but otherwise have different ink compositions. SRI does
not account for the fact that the resin coated aluminum powder paste of
inventive Examples 1 and 2 have an aluminum powder content of 47%,
average particle diameter 11.5 μm and a thickness of 20 Ǻ, while the
uncoated aluminum powder paste of comparative example 3 has an
aluminum powder content of 50%, average particle diameter 10.5 μm and a
thickness of 18Ǻ. (FFs 14-15).
SRI does not provide objective evidence that the better weather resistance
(i.e., lower value of ΔE) and maintenance of luster and separation of
inventive examples 1 and 2 compared to comparative example 3 is the direct
result of using the resin coated metallic powder instead of uncoated metallic
powder. SRI has not accounted for the differences in aluminum powder
content, average particle diameter and paste thickness between comparative
example 3 and inventive examples 1 and 2.
In conclusion, SRI does not demonstrate unexpected results because SRI
does not provide objective evidence to establish that the improved results are
the direct result of using resin coated metallic powder instead of uncoated
metallic powder. Moreover, SRI does not direct attention to where in its
Specification or through evidentiary submissions that the results are
unexpected. Instead, SRI argues that the results are unexpected in its briefs.
(App. Br. 18-20, Reply Br. 9). Attorney argument is insufficient to establish
unexpected results.
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For all these reasons, SRI has not sufficiently demonstrated that the
claimed invention achieves unexpected results.
E. Conclusions of Law
Based on the Findings of Fact and the Analysis above, SRI has not
sufficiently demonstrated that the Examiner erred in establishing a prima
facie case of obviousness. Further, SRI has not sufficiently demonstrated
that the claimed invention achieves unexpected results.
F. Decision
The decision of the Examiner rejecting claims 1-8 under 35 U.S.C. §
103(a) as unpatentable over Kametani and Kiyoshi is affirmed.
No time period for taking any subsequent action in connection with the
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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