Appeal No. 1999-1415
Application 08/784,875
explanation of the Hazen color number based on the translation of Römpp Chemie Lexicon to be
reasonable (brief, pages 7-8).
Based on this evidence, we find that the product of Comparative Example 5,
representative of Tate, as well as the products prepared by the similar processes of Pedain
declaration Examples 1 and 3, produce turbid products while the products produced by the
specification examples representing the claimed process, particularly Example 4, produce
transparent products. In this respect, we find that, as appellants point out (brief, pages 7-8), the
written description in the specification contains the disclosure that the products of the claimed
process “are free from cloudiness and can be dissolved without cloudiness in any of the standard
lacquer solvents” (specification, page 3). We agree with appellants that neither Tate (see, e.g.,
page 5, lines 13-14) nor Bock (e.g., col. 5, lines 19-21, col. 6, lines 59-63, col. 8, line 49, and col.
9, lines 2-3 and 20-21) would have reasonably suggested this result to one of ordinary skill in the
art (brief, e.g., pages 6 and 7-8).
We further find that there are differences in the Hazen color number between the products
of the examples and the comparative examples. However, we fail to find in the record, including
the translation of Römpp Chemie Lexicon, any explanation of the practical significance of this
difference as the examiner points out (supplemental answer), and such an explanation is not
provided by appellants’ bare contention that “a product having a color number of 90 has three
times the color as a product having a color number of 30” (second reply brief, page 2, citing
brief, page 8; see also brief, page 4). Indeed, appellants disclose in their written description that
the products prepared “are colorless liquids having a color value (HAZEN) . . . below 100,
preferably below 50,” without explanation of the significance of the difference (specification,
page 9, lines 25-28; see also page 3, lines 1-3). In the absence of an explanation of the practical
significance of the difference in result obtained in this indirect comparison, it is not apparent on
this record that the indirect evidence is sufficient to support appellants’ contention that such
results are indeed unexpected in view of the teachings of polyisocyanate products having
acceptable color in Tate (e.g., page 5, lines 13-14) and Bock (e.g., col. 5, lines 19-21, col. 6, lines
59-63, col. 8, line 49, and col. 9, lines 2-3 and 20-21). 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,
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