Appeal No: 2000-0635
Application No: 08/511,028
prior art, a description of the claimed invention contained
within the disclosure can be used to compare the invention to
the prior art. See In re Thorpe, 777 F.2d 695, 697-98, 227
USPQ 964, 966 (Fed. Cir. 1985).
Applicants have pointed us to no sufficient evidence of
record that would indicate that their disclosure is in error
and that a nitric acid to toluene ratio of at least 2.0 (or
2:1) would result in a reaction mixture devoid of MNT. The
arguments of counsel cannot take the place of evidence lacking
in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d
588, 595, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997).
Applicants have not convinced us that the claimed ratio
of "at least 1.5:1 such that some mononitrotoluene will remain
in the reaction mixture" is patentably distinct from the
Scheib claimed ratio of "at least 2:1". Accordingly, we
affirm the rejection of applicants' claims under the doctrine
of obviousness-type double patenting.
35 USC § 103:
Applicants' arguments addressing the examiner's rejection
of the claims under 35 USC § 103 in view of Schieb are
basically the same as the arguments addressing the rejection
of the claims under the doctrine of obviousness-type double
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007