Appeal No. 2007-0623 Page 4
Application No. 10/380,591
relative to Burgess, Vorozhtzov and Lindley2. Instead, Appellants focus their
attention on Hartmann. Specifically, Appellants emphasize that the formula 1
compounds produced by the claimed process have a hydroxyl in the R5 position,
whereas Hartmann’s corresponding compound contains a methoxy in the R5
position. Brief, page 5, see also Answer, page 8. Appellants assert that those
skilled in the art recognize that hydroxy and methoxy, while electronically similar,
are not chemically similar. Brief, page 6. Therefore, Appellants contend that a
person of ordinary skill in the art would not expect that the claimed process,
which reacts a compound of formula V with an azide of formula IX, would result
in a compound of formula 1. Brief, page 4.
Instead, Appellants argue that “[a] skilled person would expect that the
acidic phenolic group would react first with the basic azide to form [a phenolate
salt and] HN3 which degrades easily.” Brief, page 6. Appellants assert that the
“phenolate salt would then react in place of the azide as the nucleophile in other
potential reaction steps, leading to other compounds than the desired
benzotriazoles.”3 Id. Therefore, Appellants contend that “[t]here is no motivation
provided from the cited art to attempt such reactions in the presence of a
phenol.” Brief, page 7.
2 The Examiner relies on Lindley to teach a catalyst – the subject matter of claim 11. Answer,
page 7. However, since claim 11 falls together with claim 1, we do not discuss Lindley further.
3 Appellants fail to direct our attention to any evidence on this record that supports this position.
Attorney argument cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
549 F.2d 775, 782, 193 USPQ 17, 22 (CCPA 1977). We recognize Appellants’ reliance on “‘The
Condensed Chemical Dictionary,’ 10th Ed., 1981, Revised by Gessner G. Hawley, page 381,
column right, last item (diphenyl oxide).” This reference, however, was not entered into the
record. Answer, page 3. Accordingly, we have not included this reference in our deliberations.
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