Appeal No. 1997-4226
Application 08/501,152
composition,” one of ordinary skill in the art following the teachings in the reference would have arrived
“at a hydraulic fluid having a flash point above 320°F,” that is, 160°C (answer, pages 3-4).
In their brief, appellants submit that the polyol partial esters specified in the appealed claims are
not within the disclosure of Schnur. Appellants point out that the diols and polyols of Schnur are
completely esterified according to the reference while the claimed esters are partially esterified as seen
from the hydroxy value, the highest molecular weight of the esters obtained under the teachings of the
reference is below that of the partial esters specified in the claims (brief, pages 8-12). Appellants
further point out that the claims recite a limitation on flame retardancy for the claimed hydraulic oil that is
not suggested by the reference (brief, pages 14-15; reply brief, pages 2-3). We observe that this
limitation is specifically “expressed in terms of the length of continuous burning time of not more than 30
seconds” in claims 1 and 8. The examiner responds that “[a]ppellants have not submitted any evidence
. . . which shows that the esters of Schnur would not possess the characteristics of the claimed esters”
and that “the limitations on which Appellant [sic] relies (i.e., the continuous burning time of the hydraulic
fluid) are not stated in the claims” (answer, page 5).
It seems to us that the examiner’s position is essentially that the claimed partial esters are
structurally related to the full esters of Schnur because she has not factually support her apparent
position that there are no differences in properties between these two sets of esters even in view of
appellants’ analysis showing actual differences in structure and properties based on claim limitations.
However, the mere allegation of structural similarity without supporting evidence that one of ordinary
skill in the art would have made the necessary modification to the esters of Schnur in order to arrive at
the claimed partial esters is not sufficient to establish a prima facie case of obviousness. See In re
Jones, 958 F.2d 347, 349-51, 21 USPQ2d 1941, 1943-44 (Fed. Cir. 1992) (“Conspicuously missing
from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of
ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art
salts necessary to arrive at the claimed . . . salt.”); In re Grabiak, 769 F.2d 729, 731-32, 226 USPQ
870, 872 (Fed. Cir. 1985) (“[W]e have concluded that generalization should be avoided insofar as
specific chemical structures are alleged to be prima facie obvious one from the other. . . . [I]n the case
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