Appeal No. 1996-1080
Application No. 07/869,111
different protecting groups is lost here since all the
variables are not fixed. In re Dunn, 349 F.2d 433, 439, 146
USPQ 479, 483 (CCPA 1965). The declarant fails to
set forth any reasoning for employing “larger scale” reactions
than those disclosed by Watanabe, which, for some unexplained
reason, produces far less yield than reported by Watanabe (see
Experiments 1, 2 and page 15 of the Brief). As noted by the
examiner on page 5 of the Answer, the claims are also not
limited to any reaction conditions or specific methylating
agents while the showing in the Declaration is limited to a
particular methylating agent and specific reaction conditions.
Therefore the Declaration evidence has not been shown to be
reasonably predictive of or commensurate in scope with the
claimed subject matter. In re Boesch, 617 F.2d 272, 276, 205
USPQ 215, 219 (CCPA 1980).
Finally, we note that it is not enough that the results
for the claimed subject matter and the prior art invention are
different, as shown in Table 1 on page 5 of the Watanabe II
Declaration. Appellants must demonstrate that such results
are unexpected. In re Geisler, 116 F.3d 1465, 1469-70, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Merck & Co., Inc.,
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007