Appeal No. 94-2113
Application 07/801,207
shown to exist) and (2) unobvious subject matter (a particular
combination where synergism may exist). Compare In re Muchmore,
433 F.2d 824, 826, 167 USPQ 681, 683 (CCPA 1970) (claims which
include obvious subject matter and non-obvious subject matter are
not patentable under 35 U.S.C. § 103).
The "evidence" of alleged synergism is not commensurate in
scope with the breadth of the claims. It is well established
that a showing of unexpected results generally must be
commensurate in scope with the breadth of the claim sought to be
patented. See, inter alia, (1) In re Greenfield, 571 F.2d 1185,
1189, 197 USPQ 227, 230 (CCPA 1978) (showing of unexpected
results must be commensurate in scope with breadth of claim);
(2) In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058
(Fed. Cir. 1990) (same); and (3) In re Lindner, 457 F.2d 506,
508, 173 USPQ 356, 358 (CCPA 1972) (same). Applicants' claim 1
covers the use of numerous cholesterol lowering drugs. See the
extensive list of compounds described in the specification at
page 17, line 6 through page 27, line 25. Applicants' claim 1
also covers the use of ACE inhibitors. See page 27, line 26
through page 30, line 11. Only product claim 28 is limited to a
combination of pravastatin and captopril. No ratio of
pravastatin to captopril is recited in the claim. The
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