Appeal No. 2002-2057
Application No. 09/351,147
ordinary skill in the art to use the ZSM-5 of EP ‘736 in Drake,
thus arriving at a process encompassed by at least appealed
claim 1. If a prima facie case of obviousness exists, the
examiner should reevaluate all of the appellants’ relied upon
arguments and evidence to determine whether the prima facie case
has been adequately rebutted.
At oral hearing, the appellants’ counsel referred to the
experimental data summarized on pages 18 and 19 as evidence of
nonobviousness. The examiner should determine whether this
evidence is sufficient to overcome any prima facie case. For
example, we note that appealed claim 1 reads on a wide variety
of zeolites, phosphorus-containing compounds, and substantially
inert matrix materials in virtually any relative amounts. By
contrast, the relied upon evidence does not appear to be
commensurate in scope with the degree of patent protection
desired.1 Also, the relied upon evidence does not appear to show
1 See, e.g., In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d
1056, 1058 (Fed. Cir. 1990)(“‘[O]bjective evidence of
nonobviousness must be commensurate in scope with the
claims.’”)(quoting In re Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA 1972)); In re Dill, 604 F.2d 1356, 1361, 202 USPQ
805, 808 (CCPA 1979)(“The evidence presented to rebut a prima
facie case of obviousness must be commensurate in scope with the
claims to which it pertains.”).
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