Appeal No. 2004-0245
Application 09/265,926
Appellant contends that “[t]he experiments in the Jones Declaration were designed to
determine the significance of the continued presence of the 6-chloro substituent during
carboxylation and through the final step” and “[t]he proposition sought to be proved does not
require an exact duplication of the examples of [Grinter] in the most minute detail,” relying on In
re Yan, 175 USPQ 96, 98. Thus, appellant submits that
[t]he fact that a different solvent, temperature, etc. may have been used relative to
[Grinter] does nothing to compromise the scientific validity of the conclusion reached,
i.e., that continued presence of the 6-chloro substituent during carboxylation and
through the final step results in an unexpected yield increase. The point at which the
chloro substituent was removed was the only difference, i.e., the comparison was
scientifically valid. [Brief, page 12; emphasis in original deleted.]
Appellant further contends that the conclusion of declarant Jones, that the
experimental data confirm that the continued presence of the 6-chloro substituent
during decarboxylation and through the first step of the process is responsible for the
advantages of the [claimed] process . . . over that described in [Grinter] rather than the
particular reaction conditions employed such as removal of the column
chromatography steps or the nature of the ester obtained following decarboxylation of
the compound of formula (IV)
[declaration, ¶ 9, page 7; quoted in part, brief, page 12], is “a statement [which] is an opinion of
an expert interpreting data and thus should be accorded appropriate weight” (brief, page 12).
Appellant then concludes that “[t]he results presented show unambiguously that the advantages
are due to the Cl substituent and not due to any other conditions as all other conditions were the
same” (id.).
Appellant finally alleges that the process of the Jones Declaration does fall within claim
10 even in view of the transesterification because of the claim language “which process
comprises” (id.).
The examiner responds that even in view of the transitional term “comprising,” Grinter
“does not have transesterification, and the claims do not even mention it, so the comparison
should have been done on the basis of an overall process which did not involve
transesterification” (answer, page 10). The examiner submits that it is well settled that the
claimed subject matter must be compared with the closest prior art, citing inter alia, In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979), and holds that the deviations
between the claimed process and that representing Grinter in the Jones declaration “are so
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