Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 testimony and there is no requirement of law that an examiner must have counter-
2 testimony or evidence to discredit declaration testimony. See, e.g., Rohm and Haas Co.
3 v. Brotech Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. Cir. 1997) (fact-
4 finder need not credit unsupported assertions of an expert witness). At oral argument,
5 Appellants acknowledge that one reason the Examiner declined to credit Dr. Wuest was
6 that the alternate process Dr. Wuest has suggested has not been shown to have been
7 "actually been carried out ***." Tr-8:16-18. Appellants go on to say "[b]ut the
8 [E]xaminer never provided any references to dispute the credibility of the expert opinion
9 of Dr. Wuest on this point." Tr-8:20-22. In point of fact, however, Appellants do not,
10 and cannot, deny the correctness of the Examiner's observation that the Wuest alternative
11 process has not been shown to have been carried out.
12 Dr. Wuest characterized the proposed “alternative pathways” as “Potential
13 Routes” and “possible” alternatives. As indicated earlier, Dr. Wuest does not indicate
14 that any scientist made any attempt to carry out his suggested alternative. While
15 Dr. Wuest refers to a Morin text, the most he can say is that “I would expect that this
16 reaction [meaning the Ochiai reaction] could be carried out.” Wuest declaration,
17 Ex. 1010, page 23. Why? Painting with a broad brush, Dr. Wuest refers to the examples
18 in Ochiai specifications, but does not refer to any particular example or why the content
19 of the examples provides a basis for his “I would expect” opinion. Moreover, as
20 developed during oral argument, counsel for Appellants conceded that Dr. Wuest made
21 no analysis of the advantages and disadvantages of his proposed reaction scheme vis-à-
22 vis the reaction schemes actually described in the Ochiai specifications. Tr-24:13-22.
23 There is no discussion by Dr. Wuest as to why one skilled in the art would go out of the
20
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