Appeal No. 97-0222
Application 08/115,561
According to the examiner, “[a]n opinion as to a legal conclusion
(such as unexpected results) is not entitled to any weight. In
re Chilowski, 306 F.2d 908, 134 USPQ 515 (CCPA 1962)” (page 8 of
Answer, emphasis added). The examiner’s reliance on Chilowski is
not well founded. The court in Chilowski ruled that the issue of
sufficiency of disclosure under § 112, first paragraph, is a
legal one that is outside the field of expertise of appellant’s
experts. Therefore, the court ruled that the experts’ opinions
regarding the sufficiency of disclosure were of no probative
value. In the present case, the fatal flaw in the examiner’s
rationale is that the issue of unexpected results is not a legal
issue that is outside the field of expertise of the declarant,
Dr. Bennett. It is fundamental that the purpose of a Rule 132
Declaration is to provide an avenue for the applicant to offer a
fact-based opinion that is relevant to unexpected results
emanating from the claimed invention. If the declarant simply
gives an opinion that the results are unexpected without
providing a factual basis for the opinion, then the examiner’s
second criticism of the Declaration would have merit, viz., “no
logical basis for anyone’s conclusion as to unexpected results
has been offered” (page 8 of Answer). The examiner’s criticism
notwithstanding, the Declaration, at pages 3 and 4, provides
factual support for the declarant’s opinion why it is unexpected
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