Appeal No. 2003-0465
Application No. 09/424,119
benefits of Clausen’s diaminopyrazole oxidation bases (e.g., see
lines 50-68 in column 4 and lines 1-10 in column 5).
It is also the appellants’ position that the applied
references would not have provided the artisan with a reasonable
expectation that the examiner’s proposed combination would have
been successful. In support of this position, the appellants
emphasize the unpredictability which attends this art. Like the
examiner, we recognize this unpredictability but, unlike the
appellants, do not consider it incompatible with a reasonable
expectation of success. Indeed, if persuasive, the appellants’
position on this matter would necessarily raise the issue of
whether the broadly defined composition of appealed independent
other evidence from which one skilled in the art could conclude
the existence or degree of the alleged problem” (reply brief,
pages 7-8), and, therefore, “[a]bsent such data or evidence,
Applicants submit that there is insufficient motivation for one
skilled in the art to rely on Clausen’s passing statement” (reply
brief, page 8). This argument lacks discernible merit. On the
record before us, no basis exists for doubting the aforementioned
disclosure of Clausen who may be properly regarded as a person
having knowledge and skill in this art. On the other hand, the
validity of the argument under consideration is questionable
simply because the attorney who made it can not be properly
regarded as a person of knowledge and skill in this art. Compare
In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA
1972)(mere lawyer’s arguments unsupported by factual evidence are
insufficient to establish unexpected results).
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