Appeal No. 2004-0245
Application 09/265,926
182 USPQ 294, 298 (CCPA 1974) (the indirect evidence provided a reliable indication of the
performance of the closest claimed and prior art compounds); In re Dunn, 349 F.2d 433, 439,
146 USPQ 479, 483 (CCPA 1965) (“[W]e do not 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.”). Accordingly, we
are of the opinion that the evidence in the Jones declaration taken in light of appellant’s
arguments in the brief and the examiner’s arguments in the answer, is entitled to little, if any,
weight.
In this respect, we do not find that credibility is conferred on the evidence in the Jones
declaration by appellant’s assertion that Jones is an “expert,” because, on this record, the
examiner has clearly established that the evidence with respect to the result obtained with the
process alleged to be found in Grinter is incongruous with the teachings of Grinter. See
generally, In re Reuter, 651 F.2d 751, 759, 210 USPQ 249, 256 (CCPA 1981) (a factual
statement by an expert in the art is entitled to full consideration in the absence of evidence to the
contrary); cf. In re Grunwell, 609 F.2d 486, 491, 203 USPQ 1055, 1059 (CCPA 1979); Lindner,
supra (“[M]ere conclusory statements in the specification and affidavits are entitled to little
weight when the Patent Office questions the efficacy of those statements. [Citations omitted].”).
Indeed, we will not hear appellant to contend otherwise with respect to the teachings of Grinter
because such contentions raise the issue of the inoperability of the commonly assigned ‘288
patent counterpart of Grinter (see above note 1), and the quantum of evidence provided by the
Jones declaration is insufficient to establish inoperability of the ‘288 patent. See, e.g., In re
Lamberti, 545 F.2d 747, 751, 751 n.2, 192 USPQ 278, 281, 281 n.2 (CCPA 1976); In re Weber,
405 F.2d 1403, 1406-07, 160 USPQ 549, 552-53 (CCPA 1969).
Finally, even if it can be said that the evidence in the Jones declaration established an
unobvious result, such a result is not commensurate in scope with the range of processes
encompassed in appealed claim 10 which, as we noted above, does not specify at least the
transesterification step used in the process representing the claim, or with respect to the
teachings of Grinter which does not require said step. See generally, In re Kulling, 897 F.2d
1147, 1149-50, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990) (objective evidence directed to
optional embodiments).
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