Appeal 2007-0691
Application 10/465,423
1 a function of the triazole or are instead a function of the triazole and the
2 sulfur-containing compound.
3 In his declaration, Dr. Chasan testifies that the results he says he
4 obtained are "surprising." However, Dr. Chasan's "surprising" statement is
5 not a cogent response to the Examiner's concerns. In this respect, we note
6 that Ciba has not filed a reply to the Examiner's Answer.1 It is not clear on
7 what underlying basis Dr. Chasan says that the experimental data provides a
8 sufficient scientific basis for finding that Ciba's favored triazole will perform
9 a similar lead-reducing result with a representative number of the sulfur-
10 containing compounds falling within the Markush group of sulfur-containing
11 compounds set out in claims 1 and 12. The Examiner was not obligated to
12 accept Ciba's unsupported assertions of Ciba's expert witness. Rohm and
13 Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462
14 (Fed. Cir. 1997) (nothing in Federal Circuit jurisprudence requires the fact
15 finder to credit the unsupported assertions of an expert witness). We decline
16 to second-guess the weight the Examiner assigned to the experimental data.
17 The Examiner found that "it is not clear if the results presented are
18 indeed unexpected." Answer 6. The Examiner's finding is supported on this
19 record given that the claims on appeal do not limit the compositions and
20 methods to those which reduce lead-containing levels. As noted above, the
21 claims only define the lead levels of compositions containing components
1 To the extent that in some paper before the Examiner Ciba presented an
argument responding to the Examiner's concerns, no such argument is
presented in the Appeal Brief. The only arguments we consider on appeal
are those made in the Appeal Brief. 37 C.F.R. § 41.37(c)(1)(vii) (2006). All
other arguments which could have been made, but were not made, are
waived.
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