Appeal No. 96-0700
Application No. 08/153,550
replacing the bromine substituents of Christmann with chlorine
substituents, but Christmann would suggest replacing the
polyphosphoric acid solvent of Hein with acetic acid. We are
satisfied that the collective teachings of Christmann and Hein
provide considerable evidence of the prima facie obviousness of
the claimed process.
Like the examiner, we do not find that the Roberts
publication cited by appellants and the declaration of Jaffe, one
the present inventors, outweigh the evidence of obviousness of
record. While the Roberts publication is submitted for the
proposition that "the nature of remote substituents can exert an
effect on the reaction" (page 4 of Brief), Roberts is only
tangentially relevant to the specific reactions disclosed by
Christmann and presently claimed. Roberts discloses no reactions
between phthalic anhydrides and benzyl diamines. While it can be
said that Roberts supports the proposition that the substitution
of remote substituents may render the reaction somewhat
unpredictable, it must be borne in mind that absolute
predictability is not a requirement for a finding of obviousness
under 35 U.S.C. § 103. In re O'Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1681 (Fed. Cir. 1988). The mere possibility of
failure does not undermine the conclusion of obviousness. In re
Moreton, 288 F.2d 940, 943-44, 129 USPQ 288, 291 (CCPA 1961).
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