Appeal 1997-1635
Application 08/319,667
benzenesulfonic acid or p-toluenesulfonic acid for sulfuric
acid in Actual Example 21. The use of either benzenesulfonic
acid or p-toluenesulfonic acid in place of sulfuric acid in
Actual Example 21 would amount to nothing more than a use of a
known material for its intended purpose in a known environment
to accomplish an entirely expected result.
The bottom line is that Japan either anticipates or
renders obvious the subject matter of claim 1.
3. Rebuttal evidence
Applicants assert that if one "digs" into their
specification, one will discover a showing of unexpected
results. Manifestly, evidence of unexpected results is
relevant in an obviousness inquiry.
The examiner was not impressed. Explaining his lack of
conviction with respect to applicants' showing, the examiner
observes that "[t]here is no comparison between the addition
of the two compounds [, i.e., the organic sulfonic acid and
the amine,] 'one after the other' and/or 'jointly' as argued
[by applicants] (Examiner's Answer, page 6). It is true, as
the examiner held, that generally the closest prior art must
be compared (id.). In re Baxter Travenol Lab., 952 F.2d 388,
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