Appeal No. 2004-0245
Application 09/265,926
numerous and so substantial” (answer, page 12). With respect to Yan,8 the examiner
distinguishes that case on the basis that only “a specific fact” need to be established and the court
held that the fact could be established without running the full process (answer, page 13).
Upon carefully considering the objective evidence in the Green and Jones declarations in
light of the arguments raised by appellant and the examiner with respect thereto, we agree with
the examiner that the evidence does not support appellant’s position. Indeed, it is well settled
that the burden of establishing the significance of data in the record with respect to unexpected
results rests with appellant, which burden is not carried by mere arguments of counsel. See
generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re
Merck, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986); In re Longi, 759 F.2d 887,
897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14,
16 (CCPA 1972); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); In re
D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971). Appellant has not carried this
burden on this record.
We are struck by the stark difference in result between the useful product produced by
the process disclosed by Grinter as pointed out by the examiner, and the “useless” product
produced by the process alleged by declarant Jones and by appellant to be truly representative of
the teachings of Grinter. On this record, we agree with the examiner findings of substantial
differences between the process which falls within appealed claim 109 and the process which
allegedly represents Grinter, and thus there is no evidence which provides a direct or indirect
comparison between the claimed process and the processes actually disclosed by Grinter which
are the closest prior art, in a manner that can reasonably be considered to be a “side-by-side”
comparison which addresses the thrust of the ground of rejection under § 103(a). See generally,
Baxter Travenol, 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.]”);
Burckel, supra (the claimed subject matter must be compared with the closest prior art in a
manner which addresses the thrust of the rejection); In re Blondel, 499 F.2d 1311, 1317,
8 463 F.2d 1348, 1352, 175 USPQ 96, 98-99 (CCPA 1972).
9 We agree with appellant that the open-ended transitional term “comprising” opens appealed
claim 10 to include processes which include a transesterification step.
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