Appeal No. 95-5133
Application 08/135,523
such varying results as demonstrated in Tables 1 and 2 of the Schneider declaration.
In response to the declaration evidence, the examiner initially (Answer, page 8) states that "the
data, taken as a whole, does not clearly provide a basis for concluding non-obviousness." The
examiner concludes that "the values were not shown to be statistically significant and thus no
different than the control group." However, the examiner fails to provide any facts or reasons as to why
the data is considered to lack statistical significance. In addition the examiner (Answer, page 9) points
to inconsistencies between the first Declaration, originally filed in the parent application, and the second
declaration filed in this application. At page 2 of the Reply Brief, appellant explains these
inconsistencies and urges that the second Declaration provides a more appropriate comparison in that
the side-by-side comparison with a single control provides a more valid comparison. The examiner
fails to respond to this point in the letter of May 5, 1995. For many inventions that seem quite obvious,
there is no absolute predicatability of success until the invention is reduced to practice. There is always
at least a possibility of unexpected results, that would then provide an objective basis for showing that
the invention, although apparently obvious, was in law nonobvious. In re O’Farrell, 853 F.2d 894,
903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
On the record before us, we find the evidence presented by appellant is sufficient to overcome
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