Appeal No. 1997-1875
Application No. 08/451,378
considerations on the issue of obviousness. In re Rinehart,
531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
As rebuttal evidence, the appellants have submitted under
37 CFR § 1.132 a declaration executed by Dr. Horst Zinke in
1994 and a declaration executed by Dr. Horst Zinke in 1995.
Each of these declarations compares the same prior art
compound (i.e., the compound of British reference Example 32
and European reference Example 1, which is said to be the
closest prior art) with two compounds within the scope of
independent claim 1 (i.e., the compound of specification
Example 10 in the 1994 declaration and the compound of
specification Example 4 in the 1995 declaration). On page 3
of these respective declarations, the inventive compound is
said to improve antiwear properties "significantly more" than
the prior art compound which is a result said to be
"surprising."
This declaration evidence is deficient in a number of
respects.
In the first place, the rebuttal evidence is limited to
only two of the myriad number of compounds encompassed by
appealed independent claim 1 and thus is considerably more
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