Appeal No. 95-2835
Application 08/127,659
promoter. Whitman discloses that the transition or lanthanide metal salt promoted catalytic
hydrogenation process results in an increase in reaction rate, a decrease in the induction period and a
decrease in the amount of higher boiler by-products (e.g., col. 5, line 53, to col. 6, line 5, and col. 8,
lines 7-10). Indeed, one of ordinary skill in this art would have known from these teachings of Whitman
that the elimination of the transition or lanthanide metal promoter from the otherwise old process (e.g.,
col. 1, line 12, to col. 5, line 50) would result, inter alia, in a decreased reaction rate and an increased
in the induction period from the improvement in these parameters taught in the reference.
It is well settled that objective evidence of non-obviousness must be commensurate in scope
with the claims. In re Kulling, 897 F.2d 1147, 1149-50, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990);
In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778-79 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035-36, 206 USPQ 289, 295-96 (CCPA 1980); In re Greenfield, 571 F.2d 1185,
1189, 197 USPQ 227, 230 (CCPA 1978); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356,
358 (CCPA 1972); In re Tiffin, 488 F.2d 791, 792, 171 USPQ 294 (CCPA 1971). As discussed
above, we find that the objective evidence in appellant’s specification and declaration is directed to
comparisons of the claimed catalytic hydrogenation processes with known catalytic hydrogenation
processes which do not contain transition or lanthanide metal salt promoters as disclosed in Whitman,
wherein the compared processes essentially differ in the alcohol solvent. While these comparisons
involve supported rhodium catalysts in the presence of a secondary alcohol, and thus, as counsel
pointed out at oral hearing, the evidence meets the minimum requirements of the appealed claims, we
find that the comparisons do not provide objective evidence commensurate in scope with the appealed
claims for two reasons. First, as we have discussed above, the appealed claims do not contain
limitations which would (1) exclude hydrogenation catalysts that contain metals in addition to rhodium on
the same support or additional catalysts and the presence of other solvents, both in amounts which
would adversely affect the basic and novel characteristics of the claimed composition and/or (2) exclude
transition or lanthanide metal salt promoters, all of which are taught in Whitman to improve the reaction
rate and yield, and none of which is shown in the objective evidence in appellant’s specification and
declaration. Kulling, supra; In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808-09 (CCPA
1979). And, second, we are of the opinion that the objective evidence in appellant’s specification and
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