Appeal No. 2007-0218
Application No. 10/730,143
Formula (R-1) orthobisphenol. Experiments 5 and 6 are said to provide
good balance in color tone and pure black tone whereas Experiment 4 is said
to provide slightly bluish tone (Specification 227-229). However, Appellant
has not presented any evidence that this difference would have been
unexpected, particularly in view of the teaching in Suzuki that “the
combined use of two mono- or poly-phenolic reducing agents having alkyl
groups at the two substitution positions adjacent the hydroxy-substituted
position of the aromatic nucleus is effective for preventing discoloration
upon exposure to light” (col. 16, ll. 53-58). Thus, we are not persuaded by
the attorney argument indicating that these results would have been
unexpected. In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.
Cir. 1984) (“It is well settled that unexpected results must be established by
factual evidence. Mere argument or conclusory statements in the
specification does not suffice.”).
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious over Toya 126, Siga, Matsumoto, Suzuki,
and Yoshioka, which Appellant has not rebutted. We therefore affirm the
rejection of claim 1 under 35 U.S.C. § 103. Claims 3-5 and 8-10 fall with
claim 1.
3. OBVIOUSNESS REJECTION OF CLAIM 2
Claim 2 stands rejected under 35 U.S.C. § 103 as obvious in view of
Toya 126, Siga, Matsumoto, Suzuki, Yoshioka, and Toya 419.7 The
Examiner states that Toya 419, at column 2, lines 1-18, and column 12,
compound (II-a), describes using a “polyhalogenate compound of
7 Toya et al., U.S. Patent No. 5,656,419, issued August 12, 1997.
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