Appeal No. 1996-2919
Application No. 08/139,861
While the declarant characterizes these results as
"unexpected" (page 5 of Declaration), the examiner dismisses
the probative value of the Declaration as only the result of
"routine experimentation to determine the best catalyst for
the hydrogenation of carnitine" (page 4 of Answer). However,
the examiner misapplies the applicable law. It is well
settled that when a reference discloses that a number of
different compounds are effective for a particular purpose, an
applicant has the opportunity to demonstrate with objective
evidence that a selection of a particular compound disclosed
by the reference give unexpected results relative to the other
reference compounds. Character-izing an applicant's discovery
as merely the product of routine experimentation avoids the
issue of whether the applicant's discovery would have been
unexpected to one of ordinary skill in the art. In the
present case, the examiner has not set forth a rationale why
the marked superiority for the claimed catalyst demonstrated
in the Declaration would have been considered expected by one
of ordinary skill in the art.
Appellants' Reply Brief was accompanied with a SECOND
SUPPLEMENTAL DECLARATION executed by Mr. Kumobayashi on
-4-
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