Appeal No. 1999-1418
Application No. 08/418,847
Therefore, we must now retrace our assessment of the
obviousness issue before us giving due consideration to the
appellants’ evidence of nonobviousness in conjunction with the
examiner’s reference evidence of obviousness. In re Rinehart,
531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
In his answer, the examiner has conceded, in essence,
that these showings establish unexpected results with regard
to the inventive metallocenes tested in comparison with the
closest prior art metallocene of Winter. As correctly urged
by the examiner, however, the inventive metallocenes tested in
the showings are limited to only those having certain
ethylene-bridged substitutions involving methyl, ethyl and
phenyl groups. Thus, we share the examiner’s position that
the proffered showings are considerably more narrow in scope
than the appellants’ argued independent claims 5 and 6.
Evidence presented to rebut a prima facie case of
obviousness must be commensurate in scope with the claims to
which it pertains, and such evidence which is considerably
more narrow in scope than the claimed subject matter is not
sufficient to rebut a prima facie case. In re Dill, 604 F.2d
1356, 1361, 202 USPQ 805, 808 (CCPA 1979). Because the
appellants’ showing is considerably more narrow than their
5
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