Appeal 2007-0535
Application 10/601,731
“compares glycolic acid3 and succinic acid that has been neutralized with
ammonium salt with malonic acid which has been neutralized with
dimethylethanolammonium salt” and does not set forth the concentrations of
the acid salts (id. at 14). We agree with the Examiner that it is not clear
whether the different results can be attributed to the presence of malonic
acid salt as opposed to glycolic or succinic acid salts or can be attributed to
the different counterions or to different salt concentrations.
In addition, Appellants have not presented any evidence that the
results of the experiments presented in Example 9 would have been
unexpected. Instead, Appellants rely on attorney argument to characterize
these results as unexpected. However, attorney argument is not evidence.
“[I]t is well settled that unexpected results must be established by factual
evidence. ‘Mere argument . . . does not suffice.’” In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984)).
Appellants also argue:
The skilled chemist in reading Jokura et al. would be led to
utilize or at least test succinate. Malonates would certainly not
be an initial choice. Upon testing the succinate, the skilled
chemist would be dissuaded from trying the malonate upon
3 We additionally note that glycolic acid is not a dicarboxylic acid, as
required by Jokura. Thus, comparing malonic acid salt to glycolic acid salt
does not provide evidence that the composition of claim 1 has unexpected
properties as compared to the teachings of Jokura. “Although it is well
settled that comparative test data showing an unexpected result will rebut a
prima facie case of obviousness, the comparative testing must be between
the claimed invention and the closest prior art.” In re Fenn, 639 F.2d 762,
765 (CCPA 1981).
10
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013