Appeal No. 1997-3684
Application No. 08/468,010
“[a]lthough industrial standards are not necessarily determinative of what constitutes
an unobvious result, they should go a long way in evincing what one having ordinary
skill in the art look at in making a choice between compositions." On this record, we
agree with appellants (Reply Brief, page 2) that the examiner failed to meet his
burden of providing the evidence necessary to demonstrate that appellant’s
unexpected results would not be unexpected by one of ordinary skill in the art.
Accordingly, appellant is under no obligation to carry out experiments that in the
examiners opinion are better without a fact based analysis that appellant’s testing is
flawed.
Furthermore, we note the examiner’s argument (Answer, page 5) that
“because Iwasaki suggests synergism, one having ordinary skill in the art would
have been further motivated to combine the ingredients of at least claims 1-9 and
12.” However, as explained by appellant (Brief, page 9) “[t]he observed …
reductions (~50% and 95%, respectively) are substantial and unexpected.” On this
record, we find no explanation from the examiner as to why one of ordinary skill in
the art would have expected the order of magnitude difference, obtained by
appellant, as demonstrated by appellant’s results.
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