Appeal No. 1999-2529
Application 08/915,683
feel it an unreasonable burden on appellants to require comparative examples relied on for non-
obviousness to be truly comparative. The cause and effect sought to be proven is lost here in the
welter of unfixed variables.”).
It would reasonably appear from the record before us that between claimed Sample 209
and prior art Sample 210, the differences in Dmax and Dmin may be explained by the presence of
silver iodide in the core of Sample 210 because Tanemura and Shuto teach that silver iodide
should be avoided in obtaining a high contrast direct positive image having a low Dmin and a high
Dmax as we have discussed above. This explanation would reasonably appear to also apply to the
difference between claimed Sample 208 and Sample 210, although the matter of the significant
difference in the amount of thiosulfonate compound would also appear to reasonably explain the
differences in properties. While these references are silent with respect to the property of
negative sensitivity, it reasonably appears from this record that the caution with respect to the
presence of silver iodide in the core when using thiosulfonates taught by Tanemura and Shuto
would extend to other properties of the emulsion, including that of obtaining a high contrast
direct positive image. Indeed, appellants have not submitted a scientific explanation or other
objective evidence which establishes the practical significance of the Dmax, Dmin and negative
sensitivity data in light of the teachings of Tanemura and Shuto and the difference in the amount
of the thiosulfonate compound. All that is present in the record is declarant Matsunaga’s
statement that as between Samples 209 and 210, “Sample 209 gave remarkable results”
(declaration, page 6), and appellants’ statement in the reply brief that “Sample 210 . . .
undesirably exhibited significantly greater negative sensitivity[footnote omitted] than Sample
209” and that Sample 208 “resulted in an even further reduction” (pages 4-5), which does not
constitute such an explanation or evidence. See In re Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA 1972) (“This court has said . . . that mere lawyers’ arguments unsupported by
factual evidence are insufficient to establish unexpected results. [Citations omitted.] Likewise,
mere conclusory statements in the specification and affidavits are entitled to little weight when
the Patent Office questions the efficacy of those statements. [Citations omitted]”).
Appellants further compare claimed Samples 208, 209, 211 and 212 with prior art Sample
213, wherein the difference is several different thiosulfonate compounds in the former and the
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