Appeal 2007-0549
Application 10/399,312
Finally, Appellants argue that “the success of the present invention as
demonstrated in the working Examples could not have been predicted by the
combination of the primary references with Erckel” (Br. 7).
We do not find this argument persuasive. As discussed supra, Liechti
discloses that the same solvents, among them dimethyl formamide, can be
used to prepare bis-benzoxazolyl-stilbenes from either dicarboxylic acids or
their acid chlorides (see Liechti, col. 2, ll. 8-49). Erckel discloses that
dimethyl formamide or N-methylpyrrolidone can be used as a solvent when
preparing bis-benzoxazolyl-stilbenes from acid chlorides (Erckel, col. 2, ll.
52-55). Based on these teachings, we agree with the Examiner that one of
ordinary skill would have had a reasonable expectation of success when
substituting Erckel’s N-methylpyrrolidone for Liechti’s dimethyl
formamide.
If Appellants are relying on unexpected results to overcome the prima
facie case of obviousness, we note that “when 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). Moreover, “[i]t is well
settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements in the specification does not
suffice.” In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.
Cir. 1984).
Appellants do not directly compare their process to the prior art
processes. Nor do Appellants provide any specific factual basis on which to
conclude that the working Examples produce unexpected results. Appellants
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