Appeal No. 1997-1903
Application No. 08/229,118
stating that the structural formula disclosed by Esposito
includes the
n-heptanoate ester. Consequently, based on this deficiency in
Esposito, it cannot be said that Esposito provides the
motivation to select a mixture of the particular esters
recited in the appealed claims from the genus disclosed by
Heywood.
To the extent that the genus of Heywood, considered
alone, establishes a prima facie case of obviousness for
appellants' mixture, the prima facie case has been effectively
rebutted by appellants' specification evidence and Declaration
of Robert G. Bruss. Regarding the examiner's criticism that
the Bruss Declaration is not probative of nonobviousness
because the herbicidal advantages demonstrated in the
Declaration "were never disclosed by the applicant in the
specification at the time the application was filed" (page 7
of Answer), the examiner has not demonstrated that such
herbicidal advantages would not naturally flow from use of the
claimed mixture. In re Davies, 475 F.2d 667, 670, 177 USPQ
381, 384-85 (CCPA 1973); In re Khelghatian, 364 F.2d 870, 876,
-5-
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007