Appeal No. 2006-2247
Reexamination Nos. 90/006,554 and 90/006,894
1 (“[R]esults must be shown to be unexpected compared with the closest prior art.”);
2 In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483 (CCPA 1965) (“While we do
3 not intend to slight the alleged improvements, we do not feel it an unreasonable
4 burden on appellants to require comparative examples relied on for non-
5 obviousness to be truly comparative. The cause and effect sought to be proven is
6 lost here in the welter of unfixed variables.”).
7 Without such comparative experimental evidence, the opinion testimony of
8 an interested party is of little or no probative value. Cf. Ferring B.V. v. Barr
9 Laboratories, Inc., 437 F.3d 1181, 1188, 78 USPQ2d 1161, 1167 (Fed. Cir.
10 2006)(“A witness’s interest is always pertinent to his credibility and to the weight
11 to be given to his testimony...”).
12 Even when the lack of a truly comparative showing is ignored for a moment,
13 we find the experiments of record relied upon by Dr. Boeckh to be insufficient in
14 terms of scope. (Boeckh Declaration, ¶¶8-14.) For example, the working
15 examples reported in the patent under reexamination are all limited to molybdenum
16 or tungsten acid catalysts. By contrast, the appealed claims are significantly
17 broader (“catalyst of an oxide, acid or salt thereof of an element of Group 5b, 6b,
18 7b or 8”). With regard to the experiments identified in Exhibits 1-3 (largely in
19 German) attached to the declaration, it is not at all clear what specific catalyst(s)
20 were used. Under these circumstances, it can hardly be said that the showing is
31
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