Appeal No. 1999-1008
Application 08/713,905
(poly)amines of Lehmann or to an analogous ether (poly)amine, and the reaction temperature is
well above the 200°C taught in this reference. The processes of the specification Examples are
also conducted with considerably more parameters than specified in appealed claim 1, which we
found above to require only the use of an excess of phosgene, a temperature range that
encompasses 200°C and any amount of pressure. Appellants have provided no evidence or
explanation on this record which establishes that the evidence in the specification Examples
amounts to a direct or indirect comparison of the claimed process encompassed by appealed
claim 1 with the applied prior art which addresses the thrust of the ground of rejection under
§ 103(a). See generally, Baxter Travenol Labs, supra (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected compared to the closest
prior art. [Citation omitted.]”); In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA
1979); In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974). Moreover, to the
extent that the limited evidence in the specification Examples pertains to the ground of rejection
of appealed claim 1, it is certainly not commensurate with the vast scope of this claim. Cf. In re
Landgraf, 436 F.2d 1046, 1050, 168 USPQ 595, 597 (CCPA 1971) (“[E]ven if we were to
assume that the results which are indicated . . . would have been unexpected, we nevertheless
find the limited evidence presented therein insufficient to convince us of the probability that
comparable results would be attained with the totality of processes covered by the appealed
claims.”).
Therefore, based on our consideration of the totality of the record before us, we have
again weighed the evidence of obviousness found in the combined teachings of Lehmann,
Joulak, Biskup and Bischof with appellants’ countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by appealed claims 1
and 2 would have been obvious as a matter of law under 35 U.S.C. § 103(a). See generally, In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Turning now to the ground of rejection of appealed claim 3 under § 112, first paragraph,
whether there is “support” in the specification for the claimed invention (answer, pages 3 and 4)
involves the question of compliance with the written description requirement of this section of
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