Appeal No. 2006-2817 Page 10
Application No. 10/734,979
page 4), the Examiner did not give this aspect full consideration, apparently believing it
was unnecessary since species within the claim scope were disclosed in Jacobs. See
Answer, page 7: Reply brief, page 3. We do not concur with the Examiner’s reasoning
in this part of the Answer. Since the claims stand rejected under § 103, it is incumbent
upon us to consider all evidence of nonobviousness when assessing patentability.
In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). Accordingly, we
give due consideration below to the “unexpected advantages” argued by Appellants.
Brief, page 4.
Appellants urge that Sadvary “does not suggest Applicants’ invention because
Applicants’ invention provides an unexpected advantage over the expansive group of
curing agents from which the Sadvary publication asks the skilled artisan to select.” Id.
Appellants explain that this unexpected advantage is that the compounds of Formula I
can be removed from the waste water that results from the process of claim 1, avoiding
unacceptable aquatic toxicity. Reply brief, page 3.
“[W]hen unexpected results are used as evidence of nonobviousness, the results
must be shown to be unexpected compared with the closest prior art.” In re Baxter
Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). Here, the
closest prior art is Jacobs’ triphenyl (Example 4, column 9, lines 32-40) and triethylhexyl
carbamoyls (Example 5, column 9, lines 50-61), not the compounds used in Appellants’
showing. Appellants based their showing on evidence that three compounds, each
having “on average, five or more carbons” as required by claim 1, would not be
expected to have aquatic toxicity as was predicted for compounds having on average
less than five carbons. See specification, pages 15-16. The defect in this evidence is
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