Appeal 1997-1635
Application 08/319,667
15. Applicants' specification contains examples4
relied upon to prove unexpected results.
16. Example 1 (specification, page 8) describes an5
experiment in which only an amine (aminoguanidine bicarbonate)
is mixed with a composition which appears to include impure
methacrylic acid followed by separation of aldehydes in a
distillation column. Following distillation, we are told that
a bottom portion of the distillation column contains
"extensive solid precipitate (russet sludge) necessitating
shutting down the column after a mere 3 hours. 6
Applicants rely on experimental data set out in the specification in support of4
the appeal. We likewise have relied on the data and found it material in rendering our
decision. Moreover, in reaching our decision, we have made the following assumptions:
(1) the data set out in the specification upon which applicants rely is based on actual
experimentation, (2) the data is accurately set out in the specification and (3) the
data is not based on prophetic examples [see Hoffmann-La Roche, Inc. v. Promega Corp.,
1999 U.S. Dist. LEXIS 19059, Civil Action C-93-1748-VRW (N.D. Cal. Dec. 7, 1999)
(Findings of Fact 56-60, 63-66, 69, 105-106, 112, 131 and 136 and Conclusions of Law 32
and 35)]. We also have relied on the fact that there is no other data known to
applicants or the real party in interest which (1) would tend to contradict the
experimental data set out in the specification and (2) was not called to our attention
in the brief and/or reply brief on appeal [see 37 CFR § 1.56(b)(2)].
To fully understand Example 1, one skilled in the art would have to be an5
accomplished patent document archeologist with considerable talent for "digging" for,
and successfully locating, foreign patent documents, and if successful in the "dig,"
probably be fluent in German to interpret what had been found. Example 1 refers to no
less than four other patent documents, including those identified as (1) EP-B 58 927,
(2) EP-B 297 445, (3) EP-A 297 445 and (4) GDR Patent 54,354, all of which may be in the
German language.
As will become apparent, infra, a case can be made the European Patent6
Application 0 271 999 contradicts assertions made in applicants' specification.
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