Appeal No. 2007-3827
Application 08/713,905
taught by Joulak, Biskup, and Bischof. As the Examiner points out, the
passages from Siefken relied on by Dr. Stutz do not relate to the vapor phase
phosgenation methods taught in the references, and indeed, the ether amine
starting materials in the passages are not those specifically taught by
Lehmann. Furthermore, Lehmann specifically addresses the passage from
page 87 of Siefken quoted by Dr. Stutz, pointing out the performance of the
ether amines specifically taught therein contradicts the results reported by
Siefken. Indeed, Biskup, and Bischof disclose that their phosgenation
processes overcome problems reported by Siefken, and Joulak disclose that
the phosgenation processes disclosed therein overcome problems recognized
in the art.
Accordingly, Dr. Stutz’s testimony does not address the specific
teachings of the applied references and thus, the thrust of the rejection, and
accordingly, we accord this testimony little, if any, weight. See In re Reuter,
670 F.2d 1015, 1023, 759, 210 USPQ 249, 256 (CCPA 1981) (a factual
statement by an expert in the art is entitled to full consideration in the
absence of evidence to the contrary); In re Lindner, 457 F.2d 506, 508,
173 USPQ 356, 358 (CCPA 1972) (“[M]ere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent
Office questions the efficacy of those statements.” (citations omitted)); see
also, e.g., In re Grunwell, 609 F.2d 486, 491, 203 USPQ 1055, 1059 (CCPA
1979).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Lehmann, Joulak, Biskup, and Bischof with
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