Appeal No. 2006-2247
Reexamination Nos. 90/006,554 and 90/006,894
1 (Appeal Brief at 10.) In support of this position, the appellant relies on the
2 declaration of Dr. Boeckh, who happens to be one of the named inventors and an
3 employee of the patent owner BASF. (Appeal Brief at 10; Boeckh Declaration,
4 ¶¶6-8.)
5 We, like the examiner, find the relied upon evidence insufficient to rebut the
6 prima facie case of obviousness. As pointed out by the examiner, the appealed
7 claims read on any amount of acid. As to the advantage of using water in an
8 amount greater than 25%, Witman’s Example V describes a process in which the
9 water content is greater than 25%, as admitted by Dr. Boeckh. Thus, the recited
10 water content is of no help to the appellant. Also, the appellant argues that the
11 oxidation was much higher for Dr. Boeckh’s experiments in comparison to
12 Witman’s Example V. (Appeal Brief at 16.) We note, however, the N-oxide yield
13 of Witman’s Example V and the yields for the experiments discussed in the
14 Boeckh declaration are irrelevant, because these experiments are not back-to-back
15 runs that are properly comparable to Witman’s Example V. Here, the appellant has
16 failed to proffer any evidence that demonstrates (by way of meaningful
17 comparative experiments) that the differences between the claimed subject matter
18 and the closest prior art (the absence of acid and the use of pyridine as opposed to
19 PVP in Witman’s Example V) give rise to unobvious results. In re Baxter
20 Travenol Labs, 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)
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