Appeal No. 95-2835
Application 08/127,659
Counsel confirmed at oral hearing that appellant concedes that a prima facie case of
obviousness has been made out over the references applied by the examiner (see also brief, page
4). Accordingly, we have carefully reassessed the patentability of the claimed invention as a whole
based on the totality of the record, including all the evidence of obviousness and of nonobviousness,
giving due consideration to the weight of appellant’s arguments and to the objective evidence in
appellant’s specification and declaration3 under 37 CFR § 1.132. See generally In re Johnson, 747
F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
Appellant’s arguments focus on the objective evidence in his specification and declaration
(specification Tables 4 and 54; declaration Tables A and B). We must agree with appellant that the
objective evidence establishes that unexpected results were obtained with processes wherein meta-
toluenediamines were hydrogenated utilizing a catalyst consisting of rhodium on a titanium dioxide
support or rhodium on an alumina support and a solvent consisting of isopropanol, 2-butanol or a
mixture of isopropanol and tetrahydrofuran, when compared to processes which utilized the same
supported catalysts and n-propanol, t-butanol, n-butanol and tetrahydrofuran. We also find, for the
reasons advanced by appellant (brief pages 6-7) that evidence in the declaration rebuts the examiner’s
contention that the comparisons do not constitute a side-by-side comparison because of differences in
temperature (answer, page 9).
Thus, the dispositive issue in this appeal is whether the evidence of nonobviousness is
commensurate in scope with the subject matter encompassed by the appealed claims and disclosed in
Whitman (answer, pages 8-9; brief, page 6). With respect to the scope of the appealed claims, we find
that appealed claims 1 and 7-9 are an “improvement” over prior art processes wherein a hydrogenation
catalyst is used in combination with a solvent to hydrogenate meta-toluenediamines to their ring
hydrogenated counterparts in view of the "Jepson" claim format.5 See In re Ehrreich, 590 F.2d 902,
904, 200 USPQ 504, 510 (CCPA 1979). Indeed, appellant’s improvement “comprises” at least using
3 The Vedage declaration was filed on September 16, 1994 (Paper No. 7).
4 Specification Tables 4 and 5 are found in specification Examples 4 and 5. We find that specification
Examples 1-3 utilize tetrahydrofuran as the solvent and thus this subject matter does not fall within the
appealed claims.
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