JACK R. MILLER, Circuit Judge.
This appeal is from that part of the decision of the United States Patent and Trademark Office ("PTO") Board of Appeals ("board") which affirms the examiner's rejection of appellants' claims
Appellants' claims are drawn to heat shrinkable (or recoverable) articles and methods of utilizing these articles. Heat shrinkable articles, which are well known in the art, are often shaped as a hollow tube, having two open ends, or a hollow cap, having an open end and a closed end. They are used as protective coatings for pipes, electrical cables, and telephone cables by positioning the heat shrinkable article over the pipe or cable and then applying heat to shrink the article into contact with the pipe or cable. The following polymeric materials are useful in manufacturing heat shrinkable articles: polyolefins, copolymers of ethylene and vinyl acetate, copolymers of ethylene and ethyl acrylate, chlorinated or fluorinated polymers; also, ethylene-propylene, or chlorinated, or silicone rubber.
Heat shrinkable articles are typically made by the following process: (1) melt-shaping a polymeric material into an article having an original shape, (2) cross-linking the shaped article, (3) heating the cross-linked article above the melting temperature of the polymeric material, (4) expanding the heated article into a new shape, and (5) cooling the article while maintaining its expanded new shape. When an article made by this method is heated above the melting point of the polymeric material, it shrinks back to its original shape. The extent of expansion during step (4) of the above process is indicated by the expansion ratio of a dimension (often diameter) after expansion to the same dimension before expansion (i.e. when the article had its original shape).
One problem encountered in prior heat shrinkable articles is their tendency to split during expansion or shrinkage if the article has a high expansion ratio. Splitting usually occurs at the open end(s) of such articles and is especially acute if the article has a nick or notch which tends to propagate during shrinkage. Appellants state that, although the expansion ratio at which splitting
Appellants have discovered that splitting is avoided, even when high expansion ratios are utilized, if the article is provided with open end sections having relatively low expansion ratios. Figure 1 shows an example of a tube-shaped heat shrinkable article in accordance with appellants' invention.
The solid lines show the article's shape before heat shrinkage, while the dotted lines depict the article's configuration after heat shrinkage. The article assumes an hour glass shape after heat shrinkage because intermediate section 10 has a higher expansion ratio than end sections 12. Likewise, when appellants' articles are in the form of an end cap, as shown in Fig. 2 below, the hour glass shape depicted by the dotted lines results after heat shrinkage, because intermediate section 16 has a higher expansion ratio than open end section 18 and closed end section 20.
Element 24 in Fig. 2 is a gripping protuberance by which end section 20 of the end cap can be grasped when it is in the interior of conduit 22, as shown below in Fig. 3, to permit this section to be pulled out of the conduit's interior.
The following claims are illustrative:
Claims 52 and 61, which indirectly depend from claims 42 and 59, respectively, require that the article have "a gripping protuberance on the outside of the closed end section."
THE PRIOR ART
United States patent No. 3,526,683 to Heslop et al. ("Heslop") discloses a method of forming a heat recoverable article having different degrees of heat recovery at different parts of the article by a process similar to that taught by appellants. Heslop's articles are particularly useful as sleeves for parts with irregular dimensions such as an insulator for a splice between different size wires, where the article undergoes heat recovery to conform to the shape of the part. In one embodiment of Heslop, a tubular article is cross-linked at an intermediate section thereof, heated, expanded in diameter to the shape shown in Fig. 4 below, and then heat recovered to the shape depicted in Fig. 5 below.
Heslop's example I indicates that tubular articles, like that of Fig. 4, can have open
United States patent No. 3,847,183 to Meyer discloses heat recoverable closures for protecting cables from moisture penetration. The ends of the cables are protected by end caps having an open end and a closed end, while cables spliced together are encased in a cylindrical sleeve having two open ends.
United States patent No. 3,992,570 to Beinhaur discloses a rubber end cap which is placed over the end of a cable by axially aligning the closed end of the cap and the end of the cable and forcing the remainder of the cap over the closed end and over the exterior of the cable so that the cap is turned inside out.
The board affirmed the examiner's rejection of claims 35-40 and 42-67
As to appellants' argument that their articles do not split, the board concluded:
The board also concluded that the teachings of Meyer and Beinhaur would have been properly combinable with those of Heslop to provide Heslop's article with a closed end section and to telescopically insert a cable sealing device, respectively.
At the outset, we caution the Solicitor that obviousness is a question of law to be determined from the facts. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535, 218 USPQ 871, 876 (Fed.Cir.1983); Stevenson v. International Trade Commission, 612 F.2d 546, 549, 204 USPQ 276, 279 (CCPA 1979); In re May, 574 F.2d 1082, 1089, 197 USPQ 601, 606-07 (CCPA 1978). A conclusion of obviousness is not reviewed under the clearly erroneous standard, which is applicable to fact findings. See Raytheon Co. v. Roper Corp., 724 F.2d 951, 220 USPQ 592 (Fed.Cir.1983). Rather, such a conclusion is reviewed for correctness or error as a matter of law. In re Carleton, 599 F.2d 1021, 1024 n. 14, 202 USPQ 165, 169 n. 14 (CCPA 1979).
1. Prima Facie Obviousness
With respect to claims 42-48, we agree with the board that it would have been prima facie obvious to reverse the order of the expansion ratios in Heslop's article so that it would have an hour glass shape after heat recovery. Although the heat shrinkable articles in Figs. 4 and 5 of Heslop has an arrangement of expansion
We also agree with the board that it would have been prima facie obvious to close one end of Heslop's heat shrinkable articles to form an end cap, as specified by claims 49-51 and 53. It is well known to make heat shrinkable articles in the shape of end caps rather than tubes when sealing the end of a single wire rather than two spliced wires, as taught by Meyer. However, as admitted by the Solicitor at oral argument, the combination of Heslop and Meyer fails to suggest providing a gripping protuberance on the outside of the closed end, and, therefore, the board's decision with respect to claim 52 is erroneous as a matter of law.
We agree with appellants that the references would have failed to suggest to one of ordinary skill in the art the steps of: heating to form a collar at the open end section which flares out of contact with the part being covered (claim 55) and heating the open end section of an end cap to cause shrinkage of the open end section without shrinking the remainder of the cap (claim 59). Accordingly, the board's approval of the rejection of these independent claims, along with their dependent claims 56-58 and 60-64, respectively, is erroneous as a matter of law.
2. Unexpected Results
Appellants argue that, even if the PTO established a prima facie case of obviousness, it has been rebutted, because the claimed invention unexpectedly overcomes the splitting problem discussed supra. Also, they point out that the prior art of record does not suggest avoiding the splitting problem by utilizing appellants' technique.
In response to appellants' assertions of unexpected results, the Solicitor states in his brief: "There is no objective evidence in the record that `no splitting' is, in fact, a result of their claimed invention, much less that it is unexpected."
In their reply brief, appellants argue that their assertions of unexpected results are supported by objective evidence. Specifically, appellants rely on the following passages in their specification:
Intermediate End Section Cap Section Diameter Diameter Diameter End Intermediate After Before After Section Section Cap Shrinkage Shrinkage Shrinkage Expansion Expansion No. (a) (b) (d) Ratio(1) Ratio(2) ---- ----------- --------- --------- --------- ------------ 1 0.8 4.0 2.8 1.4 5 2 1.5 6.0 3.5 1.7 4 3 2.5 8.0 4.5 1.8 3.2 (1) b ÷ d; claim 42 range is 1 to 3 (2) a ÷ d; claim 42 range is greater than 3[ 6]
It is appellants' position that the combination of these passages constitutes objective evidence that the splitting problem exists and that the claimed invention overcomes this problem. We disagree.
It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice. In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972). Here, appellants' table of "[t]ypical dimensions" is devoid of any data from which we can determine whether or not the end caps described therein actually split. In essence, appellants ask us to assume that the end caps in this table are nonsplitting, because a preceding passage in the specification concludes that no splitting occurs in such articles. Examples requiring such assumptions can hardly be considered factual evidence.
Even if the specification contained objective evidence showing that appellants' heat shrinkable articles do not split, such evidence would not be a satisfactory showing of unexpected results. When an article is said to achieve unexpected (i.e. superior) results, those results must logically be shown as superior compared to the results achieved with other articles. In re Swentzel, 219 F.2d 216, 220, 104 USPQ 343, 346 (CCPA 1955). See also In re Palmer, 451 F.2d 1100, 1102, 172 USPQ 126, 128 (CCPA 1971). Moreover, an applicant relying on comparative tests to rebut a prima facie case of obviousness must compare his claimed invention to the closest prior art. In re Merchant, 575 F.2d 865, 869, 197 USPQ 785, 788 (CCPA 1978). Here, appellants have not presented any experimental data showing that prior heat shrinkable articles split. Due to the absence of tests comparing appellants' heat shrinkable articles with those of the closest prior art, we conclude that appellants' assertions of unexpected results constitute mere argument and conclusory statements in the specification which cannot establish patentability. Lindner, supra; In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978).
Appellants complain, however, that the PTO challenges their assertions of unexpected results for the first time in the Solicitor's brief.
It is elementary that the claimed invention must be considered as a whole in deciding the question of obviousness. In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed.Cir.1983); Stratoflex, 713 F.2d at 1537, 218 USPQ at 877. Although the board and the examiner correctly concluded that the invention of claims 42-51 and 53 would have been prima facie obvious, this conclusion did not properly end consideration of the obviousness question; evidence arising out of secondary considerations must always be considered. Stratoflex, supra; In re Sernaker, 702 F.2d 989, 996, 217 USPQ 1, 7 (Fed.Cir.1983).
The decision of the board is reversed with respect to claims 52 and 55-64 and vacated with respect to claims 42-51 and 53. The case is remanded for further proceedings consistent with this opinion.
REVERSED-IN-PART; VACATED-IN-PART; and REMANDED.