Appeal No. 2006-2817 Page 11
Application No. 10/734,979
that compounds meeting the claimed requirement of “five or more carbons” are
disclosed in the prior art, and therefore should have served as the baseline for the
comparison. Because the comparison was not with the closest prior art, we do not find
these results adequate to rebut the prima facie case of obviousness.
The “unexpected advantage” relied upon by Appellants is the result of using the
prior art triphenyl and triethylhexyl carbamoyl curing agents in the conventional
automobile coating process for which they were taught. To rebut prima facie
obviousness, the evidence must be of an unexpected difference in properties as
compared to the prior art, not merely a showing of an unexpected property. In re Hoch,
428 F.2d 1341, 1343, 166 USPQ 406, 409 (CCPA, 1970). “Mere recognition of latent
properties in the prior art does not render nonobvious an otherwise known invention.”
Baxter Travenol, 952 F.2d at 392, 21 USPQ2d at 1285.
In sum, after considering the totality of evidence in the record before us, we
conclude that a case of prima facie obviousness has been established. The rejection of
claim 1 is affirmed. Since claims 2, 3, and 5-14 were not separately argued, they fall
together with claim 1.
Claim 4
Appellants separately argued claim 4, stating that there was no suggestion in the
prior art to have utilized a compound of Formula I in which the R group contained an
oxygen atom. Brief, page 5. We do not agree. As pointed out by the Examiner, Jacobs
expressly describes R group substituents that contain oxygen. Answer, page 5; Jacobs,
column 5, lines 11-20. Appellants did not identify a deficiency in this disclosure.
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