Appeal No. 1998-2077
Application 08/553,324
71 and 695, and for Method 2 is 2.7, 85 and 703 (page 8). I find that in specification Example 2,
“Oxygen-bleached soft wood pulp was acidified to pH 3” after which the chelating agent EDTA was
added before (Alt. 3, “NaOH Q”), with (Alt. 2, “Q + NaOH;” see claims 1 and 20) or after (Alt 2, “Q
NaOH;” see claim 1) “NaOH,” followed by a washing step (page 8). This Example thus involves stage
Q as the sole stage of the test method. The reported data shows that the greatest amount of all metals is
removed in Alt. 2, and then to a lesser extent in Alt. 1., which, including “Fe” (“15” vs. “16”), removes
more metals than Alt. 3.
It is apparent that the comparison in specification Example 1, based on the overall sequences
(QZ and then a “charge of NaOH”)P in Method 1, representing “a previously known sequence,” and
(ZQ)P in Method 2, representing the appealed claims, wherein the “known” sequence has the additional
step of a “charge of NaOH” at twice the amount used in Method 2, is not based on the closest prior art
sequences, that is, QPZ and QPZP, as specifically disclosed in Backlund and Lindberg, and otherwise
known in the art as set forth above. Indeed, appellants merely allege that the sequence QZP “is similar
to the method disclosed in Backlund” (brief, page 13), is “disclosed in Lindberg” (reply brief, page 3)
and taught in “both Backlund and Lindberg”( id., 5). However, contrary to appellants’ contention, this
sequence is not found per se in Backlund or Lindberg, although it may be said to be within the scope of
the disclosure in Lindberg. In any event, the closest sequences to the claimed sequences disclosed in
both of these references and elsewhere in the record is QPZ and QPZP, neither of which is tested.
Furthermore, even if it is presumed that wash steps follow “Stage 1” and “Stage 2” in specification
Example 1, there is no comparison involving the presence and absence of a washing step between a Z
stage and a Q stage, regardless of the order of appearance in the sequence. Thus, on this record, in the
absence of an explanation of the significance of the evidence presented, it is unclear whether the
comparison in specification Example 1 involves a direct, or even an indirect, comparison with the closest
prior art in a manner which addresses the thrust of the rejection under § 103. See generally, In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979) (“A Rule 132 affidavit, to be
effective, must compare the claimed subject matter with the closest prior art.”); In re Blondel, 499 F.2d
1311, 1317, 182 USPQ 294, 298 (CCPA 1974).
The significance of the results, particularly Kappa number and Brightness, known in the art to be
inversely related, and Viscosity have also not been explained. Indeed, the small differences in Kappa
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