Appeal No. 2005-0440
Application No. 09/994,075
claim 1. Specifically, it is our judgment that one of ordinary
skill in the art would have found it prima facie obvious to
treat Hovey’s slurry with a sulfonating compound such as a
sulfite in order to improve the mechanical strength and
brightness of the paper as suggested in Tsukamoto.
The appellants argue that the hydrosulfite described in WO
’308 removes the chromophores already produced by alkaline
darkening, whereas the inhibition or prevention of darkening in
the claimed invention stops or reduces the production of new
chromophores. (Appeal brief at 5.) In support of this
argument, the appellants rely on Example V (and the accompanying
data summarized in Table 3) of the specification as well as
Examples VII and VIII (and the accompanying data summarized in
Tables 4 and 5) appended to the brief.2 (Id. at 5-6 and 11-12.)
2 It appears from the image file wrapper (IFW) history that
Examples VII and VIII were submitted as part of an appendix to
the amendment filed on Oct. 17, 2002. Because these experiments
do not appear to have been submitted in affidavit or declaration
form as required under 37 CFR § 1.132 (2004)(effective Sep. 20,
2000)(“any evidence submitted to traverse the rejection or
objection on a basis not otherwise provided for must be by way
of an oath or declaration...”), we consider them to be mere
lawyer’s arguments unsupported by factual evidence. Cf. In re
Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196
(Fed. Cir. 1984); In re Wood, 582 F.2d 638, 642, 199 USPQ 137,
140 (CCPA 1978); In re Lindner, 457 F.2d 506, 508-09, 173 USPQ
356, 358 (CCPA 1972).
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