Appeal No. 1997-0158
Application No. 08/026,581
Appellants appear to argue that the production of a cis-
olefin with a selectivity of more than 99% as shown in
examples 1, 5 and 6 is not taught or suggested by the applied
prior art. This argument is without any merit since the
claims do not require such selectivity. In re Self, 671 F.2d 1
1344, 1350, 213 USPQ 1, 7 (CCPA 1982). Nor do the claims
recite reaction conditions, catalysts and/or specific
reactants, which are useful for obtaining such selectivity.
Id.
To the extent that appellants may have relied on this
improvement as an unexpected result, we are convinced that
appellants have not carried their burden of proof. In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972)(the
burden of proving unexpected results rests on the party who
asserts them); In re Heyna, 360 F.2d 222, 228, 149 USPQ 692,
1Should appellants recite such a selectivity limitation
in their claims, the examiner must determine whether the
claimed subject matter is commensurate in the scope with an
enabling disclosure in the specification within the meaning of
35 U.S.C.
§ 112, first paragraph. The examiner must determine whether
more than 99% selectivity can be achieved for desired cis-
olefin products with the reactants, catalysts and conditions
covered by the claims, without undue experimentation.
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