Ex Parte Yuan

Board of Patent Appeals and Interferences

Mar 24, 2010

11141685 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHI YUAN
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Appeal 2009-008234
Application 11/141,685
Technology Center 1700
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Decided: March 24, 2010
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

The Appellant requests rehearing of a DECISION ON APPEAL
dated October 27, 2009,1 affirming the Examiner’s decision that claims 1-10
and 12-18 are unpatentable under 35 U.S.C. § 103(a).

1 Hereinafter “Decision.”
Appeal 2009-008234
Application 11/141,685

A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the request for
rehearing except as permitted by 37 C.F.R. §§ 41.52(a)(2) and (a)(3). See
37 C.F.R. § 41.52(a)(1) (2009).
In the Request for Rehearing, the Appellant argues that page 6 of the
Reply Brief and page 12 of the Appeal Brief identified factual evidence
establishing “that the claimed invention yields unexpectedly improved
properties or properties not present in the cited art.” Request 2.2 However,
the Appellant argues that the Board does not appear to have considered this
evidence. Id.
The panel did consider all of the evidence presented in the Appeal
Brief and the Reply Brief. See Decision 9. However, for completeness, we
will discuss it in more detail here.
Discussion
The Appellant directs our attention to page 6 of the Reply Brief (and
similarly, page 12 of the Appeal Brief) where the Appellant states:
Anodes formed from powder made by the method of claim 1
exhibit higher capacitance and reduced DC leakage when
compared to anodes made with the same starting powder that is
instead heat treated by conventional means such as by a vacuum
furnace (paras. [0045] – [0052], page 12, line 22 – page 15, line
1; Figs. 4-5).

Request 2.

2 Request for Rehearing dated December 18, 2009.
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Appeal 2009-008234
Application 11/141,685

The Appellant explains that Figure 4:
shows factual evidence that microwave-treated powder
(“1450C”, “▲”) made by a method representing the method of
at least claim 1 on appeal has lower DC leakage than the
commercial vacuum furnace treated powder (“C350”, “*”)
made with similar starting material over at least a significant
range of forming voltages (e.g., at least about 90 V and higher).
When considered, the results of this comparison testing would
be found very surprising and unexpected to a person having
ordinary skill in the art.

Request 4 (emphasis added; footnote omitted).
The Appellant also argues that the results reported in Figure 5 “would
be found very surprising and unexpected to a person having ordinary skill in
the art.” Id.
As explained in 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, it falls upon the
applicant to at least establish: (1) that there actually is a
difference between the results obtained through the claimed
invention and those of the prior art . . . and (2) that the
difference actually obtained would not have been expected by
one skilled in the art at the time of invention. [Citations
omitted.]

In this case, the Appellant appears to have satisfied the first prong of
Freeman, i.e., “that there actually is a difference between the results
obtained through the claimed invention and those of the prior art.” Id.
However, the Appellant has failed to direct us to any credible evidence
satisfying the second prong of Freeman, i.e., “that the difference actually
obtained would not have been expected by one skilled in the art at the time
of invention.” Id.
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Appeal 2009-008234
Application 11/141,685

We recognize that the Appellant states that the results of the
comparison testing “would be found very surprising and unexpected to a
person having ordinary skill in the art.” Request 4. However, the Appellant
does not direct us to any credible evidence that supports this allegation. See
In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“unexpected results
must be established by factual evidence[; m]ere argument or conclusory
statements in the specification does not suffice”). For example, the
Appellant does not direct us to any evidence establishing that one of
ordinary skill in the art would not have expected powder made from the
claimed method to exhibit the lower DC leakage illustrated in Figure 4 or the
higher capacitance capability illustrated in Figure 5. In fact, the Appellant
does not even direct us to any explanation of why the results reported in
Figures 2, 4, and 5 would not have been expected by one of ordinary skill in
the art. As explained above, the mere fact that there is a difference in results
obtained through the claimed method and a prior art method is not probative
evidence of non-obviousness. Freeman, 474 F.2d at 1324.
In sum, the Appellant has failed to show that the Board erred in
affirming the Examiner’s decision that claims 1-10 and 12-18 are
unpatentable under 35 U.S.C. § 103(a).
Conclusion
The Appellant’s Request for Rehearing has been granted to the extent
that the DECISION ON APPEAL dated October 27, 2009, has been
reconsidered in light of the Appellant’s arguments. However, the Request is
denied because the Decision is not modified in any respect.

REHEARING DENIED
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Appeal 2009-008234
Application 11/141,685

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MARTHA ANN FINNEGAN, ESQUIRE
CABOT CORPORATION
BILLERICA TECHNICAL CENTER
157 CONCORD ROAD
BILLERICA, MA 01821-7001

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