Appeal 2007-1679
Application 11/041,470
submit that "[t]his superior property disappears when the percentage is
decreased below or increased above the claimed range [and] is strong
evidence of unexpected results, and consequently, non-obviousness"
(Principal Br. 10, first para.).
We concur with the Examiner that, although the Specification
examples demonstrate superior rupture energies when the hydrolysate of
Formula (I) is within the claimed range, the examples do not provide a true
side-by-side comparison with compositions of Fujioka having amounts of
the hydrolysate outside the claimed range. Appellants have not refuted the
Examiner's finding that "the examples employ different amounts of
γ-glycidoxypropyltrimethoxysilane, 0.1N hydrochloric acid, ethyl-
cellosolve, colloidal silica and aluminum acetylacetonate" (Answer, 10, first
para.). In the face of such a welter of unfixed variables, no reasonable
conclusion can be drawn regarding the effect of the amount of hydrolysate
on the rupture energies of the composition. In re Dunn, 349 F.2d 433, 439,
146 USPQ 479, 483-84 (CCPA 1965). Appellants' statement that "the
Examiner's requirement to hold the 'other components' constant is improper"
is totally without merit (Principal Br. 11, first para.). Contrary to Appellants'
argument, the Examiner has hardly "created his own heightened standard
which is contrary to well-settled U.S. patent law" (Principal Br., sentence
bridging pages 10-11).
Also, these Specification examples do not provide a comparison with
the closest prior art which is Example 2 of Fujioka that contains 7.0% of
DMDES. Certainly, 7.0% is considerably closer to the claimed 8.0% than
the 5% of Appellants' Example 1. Moreover, the Specification examples are
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