Appeal 2006-2523
Application 10/206,496
carbon alcohol, propanol, the boiling point of the solution would be above
that of ethanol.
We are not convinced by Appellants’ contentions that the claimed
methods are rendered non-obvious by the disclosure in the Specification that
the eight carbon alcohol, n-octanol, forms precipitates in solution. The
Examiner correctly points out that this disclosure is limited to the use of a
silicon alkoxide. Appellants have not demonstrated how this evidence
pertains to the teachings of Adachi where the metal precursor is a titanium
alkoxide and where a silicon alkoxide is used with alcohols up to three
carbon atoms. Indeed, appellants have the burden to submit an explanation
or evidence with respect to the practical significance of such results vis-à-vis
the teachings of the applied references and why the results would have been
considered unexpected, and have not carried that burden on this record. See
generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-66
(Fed. Cir. 1997); In re Merck, 800 F.2d 1091, 1099, 231 USPQ 375,
381 (Fed. Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645,
651-52 (Fed. Cir. 1985); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356,
358 (CCPA 1972) (“This court has said . . . that mere lawyers’ arguments
unsupported by factual evidence are insufficient to establish unexpected
results.” (citations omitted)); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ
14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ
303, 306 (1971).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined knowledge of methods known in the prior art described in the
21
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: September 9, 2013