Appeal No. 95-2835
Application 08/127,659
declaration would not provide the basis for one of ordinary skill in this art to reasonably predict the
performance of a hydrogenation process for meta-toluenediamines wherein the process comprises the
use of (1) hydrogenation catalysts that contain metals in addition to rhodium on the same support or
additional catalysts and the presence of other solvents, both in amounts which would adversely affect
the basic and novel characteristics of the claimed composition and/or (2) transition or lanthanide metal
salt promoters, all of which are taught in Whitman to increase the reaction rate and yield, and none of
which is shown in the objective evidence in appellant’s specification and declaration. Compare
Clemens, supra; In re Boesch, 617 F.2d 272, 277, 205 USPQ 215, 219-20 (CCPA 1980); In re
Kollman, 595 F.2d 48, 56, 201 USPQ 193, 199 (CCPA 1979); Lindner, supra; In re Landgraf,
436 F.2d 1046, 1050, 168 USPQ 595, 597 (CCPA 1971). Appellant submits that “the catalysts and
solvents used in the examples of the instant Specification are representative of catalyst supports and
alcohols used in the prior art for the hydrogenation of meta-toluenediamines” (brief, page 6). However,
this argument is not supported by factual evidence, as we have demonstrated above, and thus is
insufficient to establish that the unexpected results obtained with the processes in the specification
Examples and the declaration extends to the full scope of the appealed claims. Lindner, supra. Thus,
the objective evidence in appellant’s specification and declaration leads to the conclusion that appealed
claims 1 and 7 through 9 read on both obvious and nonobvious subject matter and thus are too broad in
the sense of § 103. Tiffin, supra.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the teachings of Whitman and in the combined
teachings of Whitman, Chung, Massie and Cross with appellant’s countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention encompassed by appealed
claims 1 through 10 would have been obvious as a matter of law under 35 U.S.C. § 103.
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