Appeal No. 1997-3354 Page 10
Application No. 08/469,809
1451, 1454 (Fed. Cir. 1997); In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA
1973). Appellant argues that superior effects over prior known surfactants is demonstrated at page 18
of the specification (Brief, page 11). In the present case, when we consider all the evidence as a whole
we conclude that the prima facie case remains insufficiently rebutted for the following reasons.
Objective evidence of non-obviousness must be commensurate in scope with the claims. In re
Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed Cir. 1990). Claim 13 encompasses
compositions containing either alkyl or alkyl aryl ethoxy(1-20) carboxylates. The alkyl group can be
any C to C alkyl group and the aryl group can be any C -C aryl group. The data presented on8 22 4 16
pages 16-17 of the specification is limited to one C aryl ethoxy(10) carboxylate. The test described
9
on page 18 of the specification is limited to one C -C alkyl polyethoxy(4) carboxylic acid
12 14
composition and one C alkylaryl polyethoxy(10) carboxylic acid composition. The limited showing
9
does not suffice to show that the entire group of compositions within the claimed genus possess
unexpected properties.
Furthermore, the test description on page 18 does not indicate whether alkalinity sources and
chelating agents were included in any of the formulations. It is further unclear as to whether a chelating
agent was present in any of the compositions listed in Table 2. We note that the labeling of the raw
materials in Table 2 is insufficient for us to determine the identity of all the components.
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