Appeal No. 95-0015
Application No. 07/869,694
Appellant argues concerning claims 3 and 9 that the prior
art does not show particular benefits of using the recited
concentrations of compounds of formulas A or B in appellant’s
claim 1 (brief, page 8). The examiner finds that the amounts of
these compounds disclosed by Mihara (col. 24, lines 3-9) overlap
with the amounts recited in appellant’s claims 3 and 9 (answer,
page 9). Since this finding appears to be reasonable and has not
been controverted by appellant, we accept it as fact. See In re
Kunzmann, 326 F.2d 424, 425 n.3, 140 USPQ 235, 236 n.3 (CCPA
1964). Accordingly, we conclude that the invention recited in
appellant’s claims 3 and 9 would have been prima facie obvious to
one of ordinary skill in the art. See In re Malagari, 499 F.2d
1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Appellant argues that selection of the preferred structures
of compounds A or B in claims 5 and 6 and structure C in claims
16 and 17 would not have been obvious to one of ordinary skill in
the art (brief, page 8). As pointed out by the examiner (answer,
pages 9-10), Mihara’s formulas IIa and IIb (col. 4, lines 1-30)
encompass the compounds recite in appellant’s claims 5 and 6.
Mihara discloses (col. 29, lines 51-52) the
mercaptobenzotetrazole recited in claim 17 and Hirabayashi
discloses (col. 5, lines 57-63) that recited in claim 16.
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