Appeal 1997-1635
Application 08/319,667
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (when unexpected
results are used as evidence of nonobviousness, the results
must be shown to be unexpected compared with the closest prior
art); In re Merchant, 575 F.2d 865, 869, 197 USPQ 785, 788
(CCPA 1978) (same). It is also true, as noted by the
examiner, that a showing of unexpected results must be
commensurate in scope with the breadth of the claims. 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); In re Kulling, 897 F.2d 1147, 1149, 14
USPQ2d 1056, 1058 (Fed. Cir. 1990) (same).
Here, Japan describes (1) two different methods within
the scope of claim 1 and (2) the use of amines different from
those used in applicants' showing, but within the scope of
claim 1. The examiner make the observation (Examiner's
Answer, page 6) that the specification showing is limited to
the use of two amines. We have not found a cogent response to
the examiner's observation. Hence, applicants seek to reap a
crop of unexpected results considerably larger than what they
have sown in the examples in the specification.
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