Appeal No. 1996-0740
Application No. 08/107,146
surprising or unexpected only that the
results are better or superior which is not
unexpected since compounds closely related
structurally would not usually be expected to
have exactly the same build-up or
solubility." [Page 7 of Answer of 06/20/95].
In response to the Declaration of Dr. Ebenezer of August 21,
1995, the examiner set forth that "the new Ebenezer Declaration
stating the differences are surprising and unexpected is not
persuasive because in order to be persuasive the Declarants
[sic, Declarant's] statements must bear out that the
differences are really and truly surprising and unexpected. In
this case the differences are not truly surprising and
unexpected" (page 2 of Answer, 09/15/95).
For the reasons set forth by appellants in their
principal and reply briefs, we find that appellants'
declaration evidence is reasonably commensurate in scope with
the degree of protection sought by the appealed claims, and
represents a comparison with the closest prior art.
Furthermore, in stating that "[i]n this case the differences
are not truly surprising and unexpected" (page 2 of Answer,
09/15/95), the examiner has improperly substituted his opinion
for the opinion of an expert in the art. In re Zeidler, 682
F.2d 961, 966-67, 215 USPQ 490, 494 (CCPA 1982).
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