Appeal No. 2006-0767
Application No. 09/962,258
as compared to the prior art (Lipshutz) process (100% vs. “virtually 100%” or 99+%),
would have been expected by one of ordinary skill in this art to have produced the same
or similar results. See Titanium Metals Corp. Of America v. Banner, 778 F.2d 775, 781,
227 USPQ 773, 779 (Fed. Cir. 1985); In re Peterson, 315 F.3d 1325, 1329-30, 65
USPQ2d 1379, 1382 (Fed. Cir. 2003).
Additionally, the order of addition of reactants has been held to be well within the
ordinary skill in the art, absent a showing of unexpected results. See In re Gibson, 39
F.2d 975, 976, 5 USPQ 230, 231-32 (CCPA 1930)(as cited in the Answer, page 3); In re
Hampel, 162 F.2d 483, 484, 74 USPQ 171, 172-73 (CCPA 1947).
Appellants also argue that the specification provides examples of unexpected
results, specifically pointing to examples 6, 12 and 17 (Brief, pages 5 and 9). However,
we determine that these examples do not establish unexpected results for the following
reasons.
As correctly noted by the examiner (Answer, pages 4-5), the results shown by
the examples in the specification do not establish that the order of addition of the aryl
halide is responsible for any alleged unexpected results. See In re Dunn, 349 F.2d 433,
439, 146 USPQ 479, 483 (CCPA 1965)(the cause and effect sought to be proven is lost
here in the welter of unfixed variables). Furthermore, the comparisons shown must be
commensurate in scope with the subject matter sought to be patented. See In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). The process of
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