Appeal No. 95-4830
Application 07/899,361
648 (Fed. Cir. 1985).
Regarding appellants’ claim 2, Suzuki teaches that X can
be either -COO- or -OCO- (col. 2, lines 44-48).
Appellants argue that Table 2 of their specification
shows that appellants’ claimed invention produces a surprising
improvement in a significant property, i.e., response time
(brief, page 13). Appellants state that since they claim both
configurations of the internal ester, the important issue is
whether the orientation of the terminal ester recited in their
claim 1 unexpectedly improves response time (brief, pages 11
and 13).
Appellants argue that appellants’ Table 2 shows that in
one of six tests, appellants’ compound had a response time
which was only 80% as fast as that of Suzuki, whereas in the
other five tests, the response times of appellants’
compositions were faster by factors of 1.6, 1.7, 3.4, 4.3 and
9.9 (brief, page 12). For the following reasons, we do not
find this argument to be convincing.
First, it is not enough for appellant to show that the
results for appellant’s invention and the comparative examples
differ. The difference must be shown to be an unexpected
-7-7
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